Barry's Ticket Service, Inc. v. Jet Stream Enterprises Limited c/o Jet Stream
Claim Number: FA0906001270845
Complainant is Barry's
Ticket Service, Inc. (“Complainant”), represented by C. Dennis Loomis, of Baker & Hostetler LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <berrystickets.com>, registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2009.
On June 29, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <berrystickets.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 2009 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@berrystickets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <berrystickets.com> domain name is confusingly similar to Complainant’s BARRYS TICKETS mark.
2. Respondent does not have any rights or legitimate interests in the <berrystickets.com> domain name.
3. Respondent registered and used the <berrystickets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Barry's Ticket Service, Inc., is the owner of the BARRYS TICKETS mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,384,653 issued February 19, 2008). Complainant has been using its BARRYS TICKETS mark since as early as December 31, 1984 in connection with its entertainment ticket-agency services. Complainant operates its website resolving from the <barrystickets.com> domain name, which attracts over twenty million visitors per year. Complainant’s million-dollar promotion campaign includes extensive radio, newspaper, magazine, online, and venue-based television advertising.
Respondent registered the <berrystickets.com> domain name on February 6, 2001. The disputed domain name resolves to a website delivering pay-per-click advertising, including advertisements for other ticket-agency providers that are in direct competition with Complainant.
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.
The Panel finds that Complainant has established rights in
the BARRYS TICKETS mark for the purposes of Policy ¶ 4(a)(i) through its
trademark registration with the USPTO. See Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy ¶ 4(a)(i).”); see
also Reebok Int’l Ltd. v.
Prior to Respondent’s registration of the disputed domain name, Complainant did not possess a trademark registration for its BARRYS TICKETS mark. However, Complainant contends that it has common law rights in its BARRYS TICKETS mark predating Respondent’s registration of the disputed domain name. If Complainant can demonstrate adequate predating common law rights in the mark, the Panel finds that this is sufficient for the purposes of a Policy ¶ 4(a)(i) analysis. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant contends that the first use of its BARRYS
TICKETS mark in commerce occurred on December 31, 1984, and has since acquired
substantial, valuable secondary meaning.
Complainant has demonstrated continuous use of its BARRYS TICKETS mark
in radio, newspaper, magazine, online, and venue-based television advertising
since 1984, more than seventeen years prior to Respondent’s registration of the
disputed domain name. The Panel finds
that such continuous and widespread use, together with the widespread goodwill
Complainant’s mark has acquired, establishes sufficient secondary meaning in
the BARRYS TICKETS mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant
has adequately established common law rights in the BARRYS TICKETS mark prior
to Respondent’s registration of the <berrystickets.com> domain
name pursuant to Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v.
Complainant contends that Respondent’s disputed domain name is confusingly similar to Complainant’s BARRYS TICKETS mark under Policy ¶ 4(a)(i). Respondent’s <berrystickets.com> domain name contains the distinctive elements of Complainant’s BARRYS TICKETS mark with the omission of the space between the words, the replacement of the letter “a” for the letter “e” in the term “BARRYS,” and the affixation of the generic top-level domain “.com.” The Panel finds that the mere misspelling of Complainant’s mark in the <berrystickets.com> domain name is not sufficient for Respondent to distinguish the disputed domain name from the BARRYS TICKETS mark, especially because the disputed domain name remains phonetically similar to the mark. Additionally, the Panel concludes that the addition of a generic top-level domain is insignificant under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <berrystickets.com> domain name is confusingly similar to Complainant’s BARRYS TICKETS mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant has satisfied Policy ¶ 4(a)(i).
Rights or
Legitimate Interests
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent’s <berrystickets.com> domain name resolves to a website displaying click-through advertisement links that further resolve to the websites of Complainant’s competitors in the ticket-agency industry. The Panel presumes that Respondent is generating revenue from such use through the receipt of click-through fees. Thus, the Panel concludes that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant contends that Respondent is not commonly known by the <berrystickets.com> domain name. The WHOIS information lists the registrant as “Jet Stream Enterprises Limited c/o Jet Stream.” This information suggests that Respondent is not commonly known by the disputed domain name and there is no evidence in the record to suggest otherwise. Therefore, the Panel concludes that Respondent is not commonly known by the <berrystickets.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Moreover, Complainant contends that Respondent has engaged in the practice of typosquatting. Respondent is taking advantage of Internet users attempting to reach Complainant who mistakenly misspell Complainant’s BARRYS TICKETS mark by typing the letter “e” instead of “a” in the word “BARRYS.” The Panel finds that Respondent’s engagement in the practice of typosquatting is evidence that Respondent lacks rights and legitimate interests in the <berrystickets.com> domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using a confusingly similar domain name to attract Internet users to a website containing advertisement links to the websites of Complainant’s competitors. The Panel finds that Respondent’s appropriation of a misspelled version of Complainant’s BARRYS TICKETS mark to divert Internet users to competing websites likely disrupts Complainant’s business. Therefore, Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent is intentionally attempting to attract Internet users to its confusingly similar domain name for financial gain by creating a likelihood of confusion with Complainant’s BARRYS TICKETS mark. The disputed domain name’s resolving website contains click-through links that promote Complainant’s competitors and the Panel presumes that Respondent is commercially gaining from such use. Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Furthermore, the Panel finds that Respondent is engaging in typosquatting because Respondent is taking advantage of a common misspelling of Complainant’s BARRYS TICKETS mark by diverting Internet users to Respondent’s website. Thus, the Panel finds this as evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <berrystickets.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 5, 2009
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