Barry's Ticket Service, Inc. v. Barry's Tickets, LLC c/o Domain Administrator
Claim Number: FA0802001152589
Complainant is Barry's Ticket Service, Inc. (“Complainant”), represented by C.
Dennis Loomis, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <barrytickets.com> and <barrysticket.com>, registered with Nameview, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2008; on February 26, 2008, pursuant to Complainant’s request, the Complaint was dismissed without prejudice; on February 27, 2008, pursuant to Complainant’s request, the Complaint was re-filed under the National Arbitration Forum’s Rule 12(a); on March 10, 2008, pursuant to Complainant’s request, the Complaint was dismissed without prejudice; on April 7, 2008, pursuant to Complainant’s request, the Complaint was re-filed under the National Arbitration Forum’s Rule 12(a); the National Arbitration Forum received a hard copy of the Complaint on April 9, 2008.
1, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 21, 2008
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 firstname.lastname@example.org and email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barrytickets.com> and <barrysticket.com> domain names are confusingly similar to Complainant’s BARRYS TICKETS mark.
2. Respondent does not have any rights or legitimate interests in the <barrytickets.com> and <barrysticket.com> domain name.
3. Respondent registered and used the <barrytickets.com> and <barrysticket.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Barry’s Ticket Service, Inc., is a highly
successful entertainment ticket agency service with over 300,000 ticket sales
over the last five years. Complainant
has operated under the BARRYS TICKETS mark for 23 years continuously and spent
millions of dollars promoting and advertising the BARRYS TICKETS mark through
radio, newspaper, magazine, online and venue-based television advertising. In addition, Complainant owns a trademark
registration for the BARRYS TICKETS mark with the United States Patent and
Trademark Office (“USPTO”)(Reg. No. 3,384,653 issued
Respondent registered the <barrytickets.com> domain name on
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant asserts rights in the BARRYS TICKETS mark
through its trademark registration with the USPTO. However, Respondent registered the disputed
domain names before Complainant’s filing and registration with the USPTO. But, Complainant may still prove that common
law rights in the mark exist through a long standing and continuous use of the
mark. See SeekAmerica Networks Inc.
v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Complainant has operated a successful and established entertainment ticket agency for the last 23 years under the BARRYS TICKETS mark. Complainant has sold over 300,000 tickets over the past five years and spent millions of dollars in extensive advertising of the mark and business. The Panel finds that Complainant has established common law rights in the BARRYS TICKETS mark pursuant to Policy ¶ 4(a)(i), through its continuous and commercial use of the mark for 23 years, vast advertising using the mark and high volume of commercial activity in connection with the mark. See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
Complainant asserts that Respondent’s disputed domain names
are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Respondent’s
disputed domain names contain a misspelled by one letter version of
Complainant’s BARRYS TICKETS mark and add the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the use of
a complainant’s mark in a misspelled by one letter format creates a confusing
similarity between the disputed domain name and the mark. See
Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive); see
also State Farm Mut. Auto. Ins. Co. v. Try Harder
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds in this case that Complainant has established a prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”) Due to Respondent’s failure to respond to the complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to examine the evidence on record against the applicable Policy 4(c) elements.
Complainant contends that Respondent is neither commonly
known by the disputed
domain names nor licensed to register names using the BARRYS TICKETS mark. Respondent’s WHOIS information identifies
Respondent as “Barry’s Tickets, LLC c/o Domain Administrator.” However, Complainant evidences that there is
not a limited liability company in
Complainant asserts that Respondent is using the disputed domain names to display links to third-party websites offering ticket sales in competition with Complainant. The Panel finds that such use of the disputed domain names is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to intentionally divert Internet users to the associated website, where third-party links to competing websites are displayed. In cases such as this, the Panel assumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion betwee Complainant’s mark and the disputed domain names. The Panel finds that such use of a disputed domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, the Panel finds that Respondent’s use of the disputed domain names to disrupt the business of Complainant by offering links to competitors is also evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <barrytickets.com> and <barrysticket.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
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