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TD BankNorth, Inc. et al. v. Ace Ticket [2005] GENDND 1100 (9 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

1. The Parties

Complainants are TD BankNorth, Inc. (“BankNorth”), a corporation organized and existing under the laws of the State of Delaware, having a place of business at Portland, Maine, United States of America and Delaware North Companies, Inc. – Boston (“Delaware North”), a corporation organized and existing under the laws of the State of Delaware, having a place of business at Boston, Massachusetts, United States of America (collectively “Complainants”).

Respondent is Ace Ticket (“Respondent” or “Ace”) with an address atBrookline, Massachusetts, United States of America.

2. The Domain Names and Registrar

The domain names at issue are <banknorthgarden.com>, <banknorthcentre.com>, <banknorthcenter.com>, <banknortharena.com>, <tdbanknorthgardentickets.com>, and <tdbanknortharena.com> (the “Domain Names”). The registrar is Wild West Domains, Inc. (the “Registrar”) located at Scottsdale, Arizona, United States of America.

3. Procedural History

On March 18, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via email. On March 18, 2005, the Center sent an Acknowledgment of Receipt of Complaint to Complainants. On March 18, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent’s name. On March 21, 2005, the Center received the hard copy of the Complaint. The Complainants paid the required fee.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On March 22, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainants. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On April 22, 2005, the Center served an Acknowledgement of Receipt of Response.

On May 26, 2005, after the Center received completed and signed Statements of Acceptance and Declarations of Impartiality and Independence from the Panelists, Richard W. Page (the “Presiding Panelist”) together with Michelle Brownlee and Sandra Franklin, the Center notified the parties of the appointment of the Panel.

4. Factual Background

BankNorth is a banking and financial services company headquartered in Portland, Maine with banking divisions in six Northeastern states, including Massachusetts. Based on consolidated assets, BankNorth is one of the 30 largest commercial banking organizations in the United States. BankNorth is a subsidiary of the Toronto Dominion Bank Financial Group and successor to Banknorth Group, Inc., a Main corporation.

Delaware North owns and operates a 19,600 seat sports and entertainment arena located in Boston Massachusetts which was formerly named the FleetCenter and is now known as the TD BANKNORTH GARDEN. Delaware North’s Chairman Jeremy M. Jacobs owns the National Hockey League Boston Bruins. The Bruins’ home is the TD BANKNORTH GARDEN arena.

BankNorth provides a full line of retail and commercial banking and financial services for its customers in Connecticut, Maine, Massachusetts, New Hampshire, New York and Vermont, under the names and trademarks BANKNORTH GROUP, BANKNORTH and other names and marks including the phrase “BANKNORTH” (hereinafter the “Trademark”). BankNorth conducts its business through its 400 branches and 550 ATM locations as well as through its website “www.banknorth.com”. Since 1987, BankNorth and it predecessors in interest, have continuously used the BANKNORTH Trademark alone and as a component of composite marks. BankNorth is the owner of several registrations in the United States Patent and Trademark Office of the “BANKNORTH GROUP, INC.” name and design.

BankNorth promotes its name and reputation through sponsorship activities and is, and has been prior to January 6, 2005, a sponsor of the Boston Bruins, the National Hockey League team, owned by Delaware North which plays home games at the FleetCenter arena, now the TD BANKNORTH GARDEN.

Prior to Respondent’s registration of the Domain Names, BankNorth used and licensed the use of the BANKNORTH Trademark for events at the arena of Delaware North.

On January 5, 2005, the Boston Globe newspaper reported that Bank of America, the successor to the Fleet Boston Financial Group, had given up its rights to put its name on the FleetCenter, which had replaced the legendary Boston Garden in 1995. The same article stated that BankNorth would be a likely candidate to take over the naming right of the famed arena since BankNorth already has a sponsorship agreement with the Boston Bruins. On January 6, 2005, the Boston Globe again reported that “marketing specialists” suggested that BankNorth would be a likely candidate for the naming rights of the arena. On March 3, 2005, BankNorth entered into an Arena Naming Rights Agreement with Delaware North as owner of the Fleet Center, pursuant to which BankNorth paid for the 20 year right to have the arena renamed as the TD BANKNORTH GARDEN. This Agreement was announced in several newspaper articles.

Pursuant to the Agreement, BankNorth licensed Delaware North the right to use the BANKNORTH Trademark in connection with the arena and granted Delaware North the exclusive right to use the mark TD BANKNORTH GARDEN for the term of the Agreement. The Agreement also gave Delaware North the right to register and use the <tdbanknorthgarden.com> and <banknorthgarden.com> domain names which contain the BANKNORTH Trademark.

BankNorth registered the domain name <banknorth.com> in August 1996, and has operated a website at this location since at least as early as November 1998. BankNorth owns several domain names containing the BANKNORTH Trademark, all of which resolve to the BANKNORTH website. The BANKNORTH Trademark in its various versions is prominently featured on this website and has been since at least 1998. BankNorth uses this website to advertise its banking products and services and to communicate with its customers. BankNorth’s website also allows current and potential customers of BankNorth to learn about its various banking products and services and to access its on-line banking services which permit BankNorth’s customers to pay bills, transfer fund and check account balances.

Delaware North also maintains an active presence on the Internet. Since at least 1996, Delaware North has used the Internet to promote the Fleet Center arena. Delaware North uses its current website located at www.fleetcenter.com” to provide information about the sports and entertainment events held at the arena and to sell tickets to such events through its licensed ticket broker Ticketmaster. The website provides various types of information regarding the arena and its services, including maps of seat locations, information regarding the restaurants and concessions located inside the arena, postings for job opportunities at the arena, directions to the arena, information regarding restaurants, hotels and parking facilities near the arena, and policies such as the arena’s security, ticketing, alcohol and smoking policies, as well as a description of the history of the arena and its predecessor the historic BOSTON GARDEN. The website also provides links to the Boston Bruins’ and Boston Celtics’ websites.

The Agreement between BankNorth and Delaware North provides that the official website for the newly re-named TD BANKNORTH GARDEN will be located at “www.tdbanknorthgarden.com” and “www.banknorthgarden.com”. The Agreement provides that Delaware North will use such website in the same way that it is using its current website, including to provide information about and promote events scheduled at the TD BANKNORTH GARDEN, to provide information regarding the arena itself and to sell tickets to sports and entertainment events scheduled at the arena through its official ticket broker Ticketmaster. Pursuant to the Agreement, Complainants will link their respective websites to each other as a cross promotion.

Respondent is located in Brookline, Massachusetts which is a suburb of Boston and has additional offices in various locations throughout the state. Respondent is in the business of buying and re-selling tickets to concerts and sporting events at numerous venues, arenas and stadiums, including Complainants’ arena. Respondent purchases tickets and then re-sells its tickets at “market rate” which is greater than the face value of the ticket. Respondent’s website at “www.aceticket.com” states that Respondent specializes in the tickets to sold out and hard to find events as well as to New England sports teams such as the New England Patriots, Boston Red Sox, Boston Bruins and Boston Celtics. Both the Bruins and Celtics call the TD BANKNORTH GARDEN home.

On January 6, 2005, immediately following the publication of the newspaper articles and without consent of Complainants, Respondent registered the domain names <banknorthgarden.com>, <banknorthcenter.com>, <banknorthcentre.com> and <banknortharena.com> with the Registrar. On March 3, 2005, Respondent registered two additional domain names <tdbanknortharena.com> and <tdbanknorthgardentickets.com>.

The domain names <banknorthgarden.com>, <banknorthcenter.com>, <banknorthcentre.com> and <banknortharena.com> currently resolve to a website which states that it is “under construction”. The domain names <tdbanknortharena.com> and <tdbanknorthgardentickets.com> resolve to the “www.acetickets.com” website.

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainants contend that they have registrations of the trademark BANKNORTH GROUP and that they have substantially, continuously and exclusively used the BANKNORTH Trademark in connection with the business of Complainants. Complainants further contend that sponsorships, such as “event sponsors” and “naming rights sponsors”, are licensing opportunities which permit businesses to increase their brand value by associating their brands, such as the BANKNORTH Trademark, with other well-known brands, such as the BRUINS, in the context of events and marketing. In the sponsorship context, Complainants assert that the trademarks become an extremely valuable asset.

(ii) Complainants argue that the Domain Names are confusingly similar to the BANKNORTH Trademark, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the BANKNORTH Trademark with the addition of generic or descriptive terms.

(iii) Complainants contend that Respondent has no rights or legitimate interests in the Domain Names, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(ii) because it is not commonly known as BANKNORTH. Respondent has no connection or affiliation with Complainants, and has not received any license or consent, express or implied, to use the BANKNORTH Trademark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondent has deliberately registered domain names containing the BANKNORTH Trademark to attract the attention of Internet users searching for BANKNORTH venues or products. Complainants argue that the domain names <tdBANKNORTHarena.com> and <tdBANKNORTHarenatickets.com> resolve directly to Respondent’s website at “www.acetickets.com”. This shows that Respondent’s intent is to derive commercial gain by diverting traffic to its website and selling tickets. The other domain names <banknorthgarden.com>, <banknorthcenter.com>, <banknorthcentre.com> and <banknortharena.com> are directed to a website which reads “under construction”. Complainants assert that the Panel should view the actions of the Respondent as undertaking a concerted strategy with all of the Domain Names.

(iv) Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy. More specifically Complainants contend that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product.

Complainants allege that Respondent registered the Domain Names after reading articles in the Boston newspapers about the possible change in naming rights to the FleetCenter arena. Complainants further allege that Respondent had actual knowledge of Complainants because BANKNORTH is well-known in the Northeastern United States and that Respondent is motivated by purely commercial intentions to sell tickets to events at the TD BANKNORTH GARDEN and to competing events. In addition, Complainants allege that Respondent has registered domain names using other well-known sports and entertainment venues in Massachusetts and that all of these circumstances conspire to show that Respondent is acting in bad faith.

B. Respondent’s contentions

(i) Respondent does not dispute that the Complainants have registrations of the BANKNORTH GROUP trademark. Respondent does not discuss any potential rights which Complainants have in BANKNORTH Trademarks, arising either from trademark registrations or common law rights from use of the “BANKNORTH” phrase in commerce in the Northeastern United States.

(ii) Respondent asserts that the Domain Names are not identical or confusingly similar to any BANKNORTH Trademark because a reasonable person would not assume the Domain Names are actually being used or sponsored by Complainants. Respondent further asserts that use of the phrase “ticket(s)” in a domain name indicates an entity that sells or re-sells tickets and is an accurate description of Respondent’s business.

(iii) Respondent argues that it has rights to or legitimate interests in the Domain Names because Complainants never registered them and the public will view them as website addresses where they can purchase tickets to events at the subject venue.

(iv) Respondent denies that it registered or used the Domain Names in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration. Respondent asserts that none of these types of evidence applies.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainants and the Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainants have met their burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772.

Paragraph 4(a) of the Policy directs that Complainants must prove each of the following:

(i) that the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) that the Respondent has no legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

Enforceable Trademark Rights

Complainants contend that they have registrations of the BANKNORTH GROUP trademark. Complainants assert that the primary portion of this registered trademark is the phrase “BANKNORTH” which should be considered a protectable trademark supported by the registrations.

Complainants further allege that they have continuously used the phrase “BANKNORTH” in the offering of significant financial services and in the sponsorship of numerous sports and entertainment events, especially in the Northeastern United States. Respondent has not contested these allegations.

The Panel should, nevertheless, satisfy itself that Complainants have met their burden in showing that they enjoy trademark protection, because of trademark registrations and/or because of secondary association creating common law rights in the phrase BANKNORTH.

Complainants have shown in their proof a continuous use of the “BANKNORTH” phrase in the financial services offered by the bank and in the sponsorship of sports and entertainment events since 1987. Much of this activity has been focused on the Northeastern United States. Complainants have spent considerable time and money promoting the BANKNORTH Trademark, which is uncontested by Respondent. For purposes of this proceeding, the Panel finds that Complainants have established trademark rights in the BANKNORTH Mark, and that by having been used for so long and so exclusively by Complainants with reference to the particular financial services and sponsorship of sports and entertainment events that to the purchasing public, the word or phrase has come to be associated with the services and sponsorship of Complainants. See Broadway Trading, LLC v. Gene Weissman, National Arbitration Forum Case No. FA 94310.

Complainants further contend that the Domain Names are confusingly similar to the BANKNORTH Trademark pursuant to the Policy, paragraph 4(a)(i).

Respondent contests that the Domain Names are confusingly similar to the BANKNORTH Trademark. Respondent argues that the phrases “garden”, “center”, “arena”, and “tickets” which are added to the BANKNORTH Trademark are not generic or descriptive. Respondent argues that these phrases in fact distinguish the Domain Names from the BANKNORTH Trademark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name which are generic or descriptive does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

Contrary to the Respondent’s contention, the owner of the registered trademark does not have to show “likelihood of confusion”, as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this factor. Under paragraph 4(a)(i) of the Policy, the question of identity and confusing similarity is evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. It thus is irrelevant, for purposes of evaluating the first factor, whether consumers would avoid confusion by reviewing the content of Respondent’s website.

The Panel has found that for purposes of this proceeding Complainants have rights in the BANKNORTH Trademark. Numerous Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and Gorstew Limited, Jamaica, and Unique Vacations, Inc. v. Cottrell Travel, National Arbitration Forum Case No. FA94923. The Panel finds that the phrases which have been added to the phrase BANKNORTH to create the Domain Names are descriptive of the venue for the sports and entertainment events or of the services of Respondent in offering “tickets” for sale, and that the primary impression of the Domain Name is that of Complainants’ trademark BANKNORTH. Accordingly, the Panel finds that the Domain Names are confusingly similar to BANKNORTH Trademark in which Complainants have rights, pursuant to the Policy, paragraph 4(a)(i).

Rights or Legitimate Interest

Paragraph 4(a)(ii) of the Policy requires the Complainants to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Policy, paragraph 4(c) allows three non-exclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Names:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

Respondent has not directly addressed the issue of whether it has rights or legitimate interests under the Policy, but appears to argue that it is making a nominative fair use of the trademark in connection with its bona fide offering of ticket-selling services, which include events at the TD BankNorth Garden. See paragraph 30 of Response. This argument is disingenuous with respect to all Domain Names except <tdbanknorthgardentickets.com>, since that is the only Domain Name that accurately reflects the name of the arena at which ticketed events are held. Even if one considers the <tdbanknorthgardentickets.com> domain name, however, this argument fails. The argument Respondent advances was soundly rejected by the panel in Toyota Motor Corp. v. Brummett, NAF Case No. FA0409000326185 (November 9, 2004) (finding no legitimate interest of ticket reseller in <toyotacentertickets.com>). The Panel agrees with the reasoning of that panel, and finds that Respondent cannot use the doctrine of nominative fair use to establish a right or legitimate interest in the Domain Names.

It is uncontested that Respondent was not commonly known by the names used in the Domain Names before registering them, and has no relationship with or permission from Complainants for the use of the BANKNORTH Trademark. Although Respondent denies that all of the Domain Names were used for commercial purposes since some of them did not resolve to its “www.acetickets.com” site, Respondent has not presented any evidence of an intention to use those Domain Names for a non-commercial purpose, and, considering Respondent’s line of business, such a non-commercial purpose would appear unlikely.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names pursuant to the Policy, paragraph 4(a)(ii).

Bad Faith

Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy, paragraph 4(b) sets forth four non-exclusive criteria for Complainants to show bad faith registration and use of Domain Names:

“(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”

Complainants allege that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the BANKNORTH Trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product. Complainants cite the directing of the domain names <tdbanknortharena.com> and <tdbanknortharena tickets.com> to Respondent’s own website as evidence of its intent to profit by capturing Internet users looking for Complainants’ websites.

In addition, Complainants note that Respondent is from the Boston area and knows of the BANKNORTH Trademark. Reservation of the <banknorthgarden.com>, <banknorthcenter.com>, <banknorthcentre.com> and <banknortharena.com> domain names occurred immediately after notices in the Boston newspapers about the renaming of the FleetCenter arena. The <tdbanknortharena.com> and <tdbanknortharenatickets.com> domain names were registered shortly after the name of the center was formally changed to the TD BANKNORTH CENTER.

The Panel finds that the evidence supports the conclusion that Respondent is using the Domain Names in bad faith by intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion.

The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy, paragraph 4(b)(iv) and that Respondent registered and used the Domain Names in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Domain Names are confusingly similar to Complainants’ BANKNORTH Trademark, (b) that Respondent has no rights or legitimate interests in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Complainant Delaware North.

Richard W. Page
Presiding Panelist

Sandra Franklin
Panelist

Michelle Brownlee
Panelist

Dated: June 9, 2005