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The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/ Front and Center Entertainment [2005] GENDND 54 (20 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/ Front and Center Entertainment

Case No. D2004-0947

1. The Parties

The Complainant is The Orange Bowl Committee, Inc, Miami, Florida, of United States of America, represented by Hunton & Williams, United States of America.

The Respondent is Front and Center Tickets, Inc/ Front and Center Entertainment, Fort Lauderdale, Florida, of United States of America, represented by Mark Halpern.

2. The Domain Names and Registrar

The disputed domain names <orangebowl.net> and <orangebowltickets.net> (“Domain Names “) are registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2004. On November 11, 2004, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. On November 11, 2004, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response December 6, 2004. The Response was filed with the Center December 6, 2004.

The Center appointed Mark Partridge, Frederick M. Abbott and Neil A. Smith as panelists in this matter on December 23, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant has used the ORANGE BOWL mark since 1935, for one of the nation’s best-known college football tournaments. It has also expanded use of the mark to a variety of other goods and services, including a tennis tournament, a basketball championship, a golf tournament and various types of merchandise.

The ORANGE BOWL tournament has been the subject of extensive advertising and media attention and is watched annually by millions of spectators. The television rights alone to broadcast the ORANGE BOWL game involve fees in excess of $100,000,000.00.

Complainant sells millions of tickets and hundreds of thousands of goods under the ORANGE BOWL mark, some of which are sold via Complainant’s websites at “www.orangebowl.com” and “www.orangebowl.org”.

Complainant obtained a federal trademark registration for the mark ORANGE BOWL on December 12, 1995, but inadvertently allowed that registration to lapse on September 14, 2002, due an administrative error. Complainant is the co-owner federal trademark registrations for FEDEX ORANGE BOWL (Reg. No. 2,129,760; 2,037,172) and reapplied for federal registration of the mark ORANGE BOWL on December 10, 2002. Respondent admits that ORANGE BOWL is a famous name.

Respondent is engaged in the online resale of tickets for sporting and entertainment events. The domain name <orangebowltickets.net> was registered on April 14, 1999. The domain name <orangebowl.net> was registered on June 24, 1999.

Complainant sent a letter of objection on August 11, 2000, regarding Respondent’s use of <orangebowl.net>. At that time, it appears that it used that domain name for a site stating “Welcome to the Orange Bowl” on the homepage. On August 29, 2000, Respondent answered that it operates about 250 website portals directing traffic to sites where it resells event tickets.

Respondent’s conduct has been the subject of prior UDRP claims, including National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700, which found that Respondent violated the Policy by registration and use of domain names incorporating the marks NCAA, FINAL FOUR and MARCH MADNESS; and HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802, in which the majority found that Respondent’s registration and use of <daytona500tickets.net> and <daytona500tickets.org> violated the Policy (the later case involved members of this Panel: Mr. Abbott was the presiding panelist for the majority and Mr. Smith issued a dissent).

At the time the Complainant in this action was filed, Respondent used the respective Domain Names for a site that offered tickets to various events, including college bowl game tickets and National Football League tickets, as well as “all concert tickets – all sporting event tickets – all theater tickets.” The site included a disclaimer stating: “The National Collegiate Athletic Association (NCAA) has neither licensed or endorsed Front and Center Entertainment Group to sell goods and services in conjunction with NCAA and regular season or championship games.” There was no disclaimer relating to Complainant.

The domain name <orangebowl.net> is no longer active, and Respondent has agreed to transfer it to Complainant.

The domain name <orangebowltickets.net> now leads to a modified site that prominently bears the heading “Orange Bowl National Championship Tickets.” There is also a new disclaimer stating:

“Orangebowltickets.net is a private ticket broker and the FedEx Orange Bowl has neither licensed nor endorsed Front and Center Entertainment Group to sell goods and services in conjunction with The FedEx Orange Bowl and regular season or championship games.”

The page continues to offer tickets for other events, including other college bowl games, NFL games and the Superbowl, with several links from the site leading to Respondent’s “frontrow.com” website where it offers tickets to other events, including tickets to Las Vegas Shows, Broadway Shows, NASCAR races, and concerts by performers such as Celine Dion, Elton John and Cher.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name <orangebowl.net> is identical in materials part to the mark ORANGE BOWL in which it has rights.

Complainant further contends that the domain name <orangebowltickets.net> is virtually identical to its ORANGE BOWL mark and that the addition of generic term “Tickets” is not a distinguishing feature.

Complainant asserts that Respondent does not have any right or legitimate interest in the Domain Names because it is not authorized to use Complainant’s marks as domain names, is not known by those names, and is not making bona fide use of the trademark. More specifically, Complainant contends that Respondent’s resale of ORANGE BOWL tickets is contrary to the terms and conditions printed on the ticket. Complainant also contends that Respondent is not making non-commercial or fair use of the Domain Names, but instead is making commercial use of the Domain Names to divert Internet users to a site where it sells tickets to Complainant’s event and other events at inflated prices. Finally, Complainant contends that Respondent’s conduct is bad faith use and registration of the Domain Names because Respondent deliberately uses Complainant’s mark to misdirect Internet users to Respondent’s site for commercial gain.

B. Respondent

Respondent concedes that Complainant owns the mark ORANGE BOWL and that the mark is famous. Respondent also concedes that it has been the subject of prior decisions which found similar conduct to violate the Policy.

Respondent further agrees that it “cannot make any argument” regarding the domain name <orangebowl.net> and agrees to transfer the name to Complainant.

Nevertheless, Respondent claims it has a legitimate interest and right to use the domain name <orangebowltickets.net> because he is a legitimate ticket broker using the domain name to sell genuine ORANGE BOWL tickets to persons who search for such tickets online and has done so for almost five years.

Respondent contends his use of the domain name allows him to provide a valuable service to persons seeking event tickets and that such persons will not be confused because it is apparent from the fact that he sells tickets to other events that the site is not an “official” ORANGE BOWL site and because there is a disclaimer on the site.

Respondent further contends that his conduct is justified because many people in the secondary market for event tickets use similar names and because another ticket broker was allowed to keep similar domain names in NCAA v. Randy Pitkin, WIPO Case No. D2000-0903 (a split decision in which Mr. Smith sided with the majority in favor of the domain name owner).

6. Discussion and Findings

The Respondent states that it has no argument regarding the domain name <orangebowl.net> and agrees to transfer the name to Complainant. Therefore, the entirety of the Panel finds in favor of Complainant on that domain name.

With respect to the domain name <orangebowltickets.net>, Paragraph 4(a) of the Policy requires the Complainant to establish each of the following elements:

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

(ii) that the Respondent has no rights or legitimate interest in respect of the domain name; and

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

The majority of the Panel finds as follows on these elements.

A. Identical or Confusingly Similar

Respondent does not dispute that Complainant owns trademark rights in the mark ORANGE BOWL. Respondent further concedes that the ORANGE BOWL name is famous.

The issue is whether the addition of “tickets” is sufficient to avoid a finding of confusingly similarity. In reaching a conclusion under this element of the Policy, prior decisions primarily base the test on a comparison of the mark and the domain name on their own, without regard to the content of the site. See AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327.

It is generally well-established the addition of merely descriptive or non-distinctive matter to another’s mark is not sufficient to avoid confusion. See NCAA v. Randy Pitkin, WIPO Case No. D2000-0903. Thus, the addition of “.com” is held to be insufficient to avoid confusion. Id.

Similarly, in the other Panel decisions considering the issue, including decisions involving this Respondent, the addition of “tickets” to the name of an event has uniformly been held to be insufficient to avoid confusion. See National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Mark Helpern and Front & Center Entertainment, WIPO Case No. D2000-0700 (transferring domain names including <finalfourtickets.net> to the complainant); HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 (transferring the domain name <daytona500tickets.net> to the complainant); ISL Worldwide and The Federal Internationale de Football Association v. Western States Ticket Service, WIPO Case No. D2001-0070 (transferring <fifatickets.com>); The Professional Golfers’ Association of America v. 24/7 Ticket Service, WIPO Case No. D2002-0258 (transferring <pgachampiontickets.com>); NCAA v. Randy Pitkin, WIPO Case No. D2000-0903 (finding in favor of complainant on this issue, but ruling in favor of respondent on other grounds); Southwest Airlines Co. v. Patrick Orly, WIPO Case No. D2003-0761 (transferring <southwestairlinestickets.com>).

Similarly, the Panel finds that Respondent’s addition of “tickets” is not sufficient to avoid confusion since it is a generic or merely descriptive term for the goods offered by Complainant under the ORANGE BOWL mark. Accordingly, we conclude that the remaining domain name at issue is confusingly similar to a mark in which Complainant has rights under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name. The record shows that Respondent has no relationship with or authorization from Complainant for the use of the ORANGE BOWL mark. Further, it appears that Respondent is known as Front & Center Entertainment, not the name ORANGEBOWLTICKETS.NET.

Respondent contends that it is using the domain name for a bona fide offering of ORANGE BOWL tickets. Indeed, the record shows that Respondent sells ORANGE BOWL tickets, along with tickets for a wide range of other events. However, whether or not this use is a bona fide use depends on whether or not Respondent’s use of the ORANGE BOWL is legitimate, non-infringing use. Otherwise, a respondent could rely on an intentional infringement to demonstrate a legitimate interest. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (holding that infringing use of <madonna.com> to sell services did not create legitimate interest).

Respondent acknowledges that it is using Complainant’s trademark in a domain name to promote its commercial ticket brokering services. Thus, our inquiry focuses on whether that use is permitted or not.

Paragraph 4(c)(iii) of the Policy states that a registrant can demonstrate rights or a legitimate interest in the domain name if the registrant is:

“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’s use is commercial, so we must determine if it constitutes fair use.

We conclude that the Respondent’s use of Complainant’s mark in Respondent’s domain name fails to meet the test for fair use because the ORANGE BOWL mark is used in Respondent’s domain name not merely to describe, but also as an attention-getting device to attract Internet users to Respondent’s site to sell other products, and because the domain name is used to sell products that it does not describe (e.g., Broadway show tickets, Las Vegas tickets, NFL tickets and tickets for competing college bowl events). By using the mark in the domain name, Respondent is using Complainant’s mark more prominently than is necessary merely to describe its services. Moreover, the Complainant’s mark is used in a way that triggers initial interest confusion regarding the relationship with Complainant in a way that is not adequately dispelled, for reasons more fully discussed below.

We recognize that the resolution of domain name disputes depends on the specific facts involved, and that prior decisions involving similar names may not be apposite due to factual differences. Nevertheless, it is significant to note that Respondent has been involved in at least two other ICANN UDRP decisions involving the use of another’s trademark as a domain name to sell tickets online. National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Mark Helpern and Front & Center Entertainment, WIPO Case No. D2000-0700 (transferring domain names including <finalfourtickets.net> to the complainant); and HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 (transferring the domain name <daytona500tickets.net>). In each case, a decision was rendered finding that similar conduct by Respondent to that at issue here was not fair use and was a violation of the Policy.

Similarly, other panels have addressed disputes involving the addition of “tickets” to the name of an event. ISL Worldwide and The Federal Internationale de Football Association v. Western States Ticket Service, WIPO Case No. D2001-0070 (transferring <fifatickets.com>); The Professional Golfers’ Association of America v. 24/7 Ticket Service, WIPO Case No. D2002-0258 (transferring <pgachampiontickets.com>). These decisions also conclude that the type of use made by Respondent is not fair use.

The exception to these cases is NCAA v. Randy Pitkin, WIPO Case No. D2000-0903, where the majority concluded that the respondent’s use of the domain name <womensfinalfourtickets.com> and similar names was fair use and did not violate the Policy. A dissenting opinion concluded that respondent’s use of the domain names at issue was not fair use. The NCAA v. Randy Pitkin, of course, turns on the specific facts of the case, and relied at least in part on Complainant’s failure of proof, stating:

The Complainant fails to address the “fair use” defense, with the exception of the unsupported assertion in Complaint paragraph 18, Sentence 5 which states: “Respondents are able to conduct their business without using NCAA trademarks.”

Here, Complainant has provided points and authorities to support a conclusion in its favor on the question of fair use.

The panel majority considered the U.S. Supreme Court’s recent decision in KP Permanent Make-Up v. Lasting Impression, No. 03-409, decided December 8, 2004 (slip opinion) in making its determination. In that case, the Supreme Court held that a party invoking a fair use defense to trademark infringement does not carry a burden of proving that its descriptive use of a trademark term carries no likelihood of confusion.¹ The Court, however, declined to provide other guidance regarding the fair use defense, and it noted that its holding “does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant’s use is objectively fair.”

The facts in KP Permanent Make-Up are rather different that those here. KP Permanent Make-Up involved a claim of fair use of a descriptive term (“microcolor”) by an alleged infringer in reference to its own product. This case involves asserted fair use of a famous and distinctive mark to attract Internet users to a website offering products in competition with the trademark holder’s product. The panel majority has determined that Respondent’s use of Complainant’s mark goes beyond fair use and does not find KP Permanent Make-Up to the contrary.

Accordingly, for the reasons discussed above, we conclude that Respondent’s use of Complainant’s ORANGE BOWL mark in a domain name used in connection with the resale of tickets not only to the ORANGE BOWL game but also for tickets to a variety of unrelated and competing events is not fair use under the Policy. We further conclude, therefore, that Respondent lacks any right or legitimate interest in the use of ORANGE BOWL in its domain name and find in Complainant’s favor on Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Policy lists several nonexclusive criteria to show bad faith registration and use of a domain name. Paragraph 4(b)(iv) indicates that bad faith use and registration may be found when the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark.

Respondent concedes that it intentionally registered and is using Complainant’s mark to attract Internet users to its website. It does this for commercial gain. We believe Respondent does so by creating a likelihood of confusion with and by trading on Complainant’s mark. Persons initially encountering Respondent’s domain name are likely to be confused as to the source, sponsorship, affiliation or endorsement of the domain name due to the use of the famous ORANGE BOWL mark. They may thus be drawn into the site trusting that they may obtain tickets from an authorized source.

Respondent is using Complainant’s well known mark as a principal means (i.e., via the domain name) to advertise and sell products of third parties. A disclaimer may or may not be sufficient to dispel confusion as to the source of products at the “point of sale” (i.e. on Respondent’s website). However, at this point Respondent has already misused Complainant’s mark to bring consumers into its shop. Once in the shop, consumers are offered competitors’ products. In the words of the Seventh Circuit, this is “plain misdescription, in fact false advertising” (Ty Inc. v. Perryman, No. 02-1771, (7^th Cir.), decided October 4, 2002). The panel majority does not consider that Respondent’s disclaimer is adequate to cure this exercise of bad faith use of Complainant’s famous and distinctive mark.

Even assuming that a disclaimer might be effective to remedy initial interest confusion in a way that would remedy the initial problematic use, Respondent’s disclaimer does not dispel the initial interest confusion caused by the domain name itself and is inadequate to avoid likelihood of confusion at the site. Prior to this action, Respondent’s website featured a disclaimer of affiliation with the NCAA that did not mention Complainant or the ORANGE BOWL mark. This was obviously inadequate to dispel confusion about the relationship of Respondent and its site with Complainant. Subsequent to the filing of this action, Respondent has modified its site and disclaimer.

The new disclaimer is also problematic. It states that “the FedEx Orange Bowl has neither licensed or endorsed Front and Center Entertainment Group to sell goods and services in conjunction with the FedEx Orange Bowl.” The disclaimer is confusing in that it is limited the sale of “goods and services” in conjunction with the event and fails to address Respondent’s relationship to Complainant with respect to the sale of “tickets.” A person reading and understanding the disclaimer is not clearly informed whether or not Respondent as “a private ticket broker” is authorized by Complainant to resell ORANGE BOWL tickets.

We acknowledge that Respondent in part uses the domain name to resell ORANGE BOWL tickets, and in that limited sense persons are accurately informed about some of Respondent’s products. However, they are not adequately informed about the relationship of Complainant to Respondent’s site and tickets, and may incorrectly conclude Respondent’s conduct, including pricing and sale of tickets to other events, is endorsed by Complainant, when in fact that is not the case.

In sum, as a result of Respondent’s use of the famous and distinctive ORANGE BOWL mark in its domain name, consumers are likely to be brought to Respondent’s website mistakenly believing it is authorized, “official” or endorsed by Complainant. Respondent is thereupon offering to sell tickets to events which compete with that of Complainant. This is a bad faith use of Complainant’s mark. Once at the website, consumers are likely to continue to believe mistakenly that Complainant has authorized or endorsed Respondent’s use of the ORANGE BOWL mark in connection with the resale of tickets to the ORANGE BOWL game and for other events.

Therefore, we conclude that Complainant has established bad faith registration and use under Paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, we order that the domain name <orangebowl.net> and <orangebowltickets.net> be transferred to the Complainant.

Mark V.B. Partridge Presiding Panelist
Frederick M. Abbott Panelist

Dated: January 20, 2005

DISSENTING OPINION

I believe that the Panel should rule for the Respondent for the reasons enunciated in the prior decision of the WIPO panel in NCAA v. Randy Pitkin WIPO Case No. D2000-0903.

In this case the portion of the domain name that is at issue is also the name of an event, which cannot otherwise easily be otherwise described, coupled with the word “tickets,” where the website is being used for the purpose of advertising the sale of tickets to the event. It is my belief that the use of such a domain name including, as it does, the word “tickets” is not cybersquatting under the rules governing the Uniform Dispute Resolution Policy.

While the Internet domain name using only the trademark name of the event might be cybersquatting, and thus I agree with the award of the Internet domain name <orangebowl.net> to Complainant, a concession which apparently Respondent makes in its Reply Brief, without admission, I do not believe that this applies to the use of the name of the actual event coupled with the generic word “ticket.”

When the trademark is also the name of an event, such as the Orange Bowl, use of the name of the event is not always a trademark use, but may be a nominative fair use, where the words “Orange Bowl” although they be a trademark, are being used for the name of the event. It is difficult to identify the event, particularly this one, since it is one of several “bowl” games, and cannot be identified by its date, which varies from year to year, and this year, for some reason, is on a Tuesday!

I submit that the Orange Bowl event is even harder to identify, without using the words which also are a trademark, then even the Super Bowl, since various words preceding the word Bowl are used to distinguish this game from others on nearby dates, which mark also apparently indicates a major product of the Florida location in which this particular bowl game is played. It cannot be distinguished by the identification of the teams, since USC, which often commands a seat at the Rose Bowl, this year is in the Orange Bowl.

To the extent that the Orange Bowl is the name of a venue, i.e., the particular coliseum or stadium where the Orange Bowl game is played, then it is also the name of venue for which the ticket will provide a seat license for the holder to sit in, and likewise the identification of this venue, together with the generic word “tickets” where the sale of tickets for this event in this location is being held, is also not, in my view, an unfair use.

It is my belief therefore that it is not bad faith to register the domain name which is also the “name of the game,” together with the generic word “tickets “in this circumstance. Respondent has also placed a prominent disclaimer of sponsorship or association with the Orange Bowl on the face of its website, and understands the need to avoid a likelihood of confusion or mistake, if such exists. It may well be that selling a plethora of tickets to the named event at much higher prices then are normally garnered for this game, will also help avoid any likelihood of confusion or mistake in the use of the Internet domain name <orangebowltickets.com>.

Finally, I take note of the decision of the United States Supreme Court in KP Permanent Make Up v. Lasting Impressions, —U.S.—, No. 03-409 decided December 8, 2004 S.C. (December 2004), where the United States Supreme Court, in the jurisdiction where both respondent and complainant reside, and the jurisdiction where the tickets and event were sold and is held, determined that where a trademark is being used by a defendant fairly to describe, in this case, the event and/or the event tickets, then the possible existence of even actual confusion does not provide a basis for the finding of trademark infringement and unfair competition under United States law. The United States Supreme Court, specifically rejected the view of the United States Court of Appeals for the Ninth Circuit which had held that the existence of confusion might trump infringement, and/or that there would be a burden on one party or another to prove the existence of, or absence of, confusion, when a mark is being used fairly and descriptively.

The panel majority attempts to distinguish this case as one where the famous mark is being used by another “to attract Internet users to a website offering products in competition with the trademark holder’s product.” I do not believe this to be the case, since the tickets being offered are the trademark holder’s product, and are to attend the trademark holder’s product, its Orange Bowl games.

Finally, I note that the new phenomenon of corporate sponsorship has made even the trademark use of the Orange Bowl trademark, less likely to cause confusion, since it is now the, presumably “FedEx” or “Federal Express” “brand” Orange Bowl game, stadium, venue, and/or ticket therefor.

Neil Smith
Dissenting Panelist