Tickets.com, Inc. v. Woofer Smith and No Org Name
Claim Number: FA0404000257001
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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).
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.
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
Honorable Charles K. McCotter, Jr. (Ret.) and G. Gervaise Davis III, Panelists
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