Kingsley Bailey c.o.b.a. Vancouver Ticket and Tour Service v. Shane Bourdage
Claim Number: FA0907001275338
Complainant is Kingsley
Bailey c.o.b.a. Vancouver Ticket and
Tour Service (“Complainant”), represented by Zachary J. Ansley of Owen Bird Law Corporation Barristers and
Solicitors,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vancouverticketservice.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 22, 2009; the National Arbitration Forum received a hard copy of the Complaint July 29, 2009.
On July 23, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vancouverticketservice.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has 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 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 19, 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@vancouverticketservice.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <vancouverticketservice.com>, is identical to Complainant’s VANCOUVER TICKET SERVICE mark.
2. Respondent has no rights to or legitimate interests in the <vancouverticketservice.com> domain name.
3. Respondent registered and used the <vancouverticketservice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kingsley Bailey c.o.b.a. Vancouver Ticket and
Tour Service, is a small business in
Respondent registered the <vancouverticketservice.com> domain name September 19, 2007. The disputed domain name resolves to Respondent’s commercial website that prominently displays the VANCOUVER TICKET SERVICE mark, offering premium ticket sales services that are identical to Complainant’s ticket offerings under the name “Coast2CoastTickets.”
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 has not registered the VANCOUVER TICKET SERVICE mark, but governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). Previous panels have determined that a federal registration is not required so long as the Complainant can establish common law rights through proof of sufficient secondary meaning associated with 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 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).
Complainant has been using the VANCOUVER TICKET SERVICE mark
in connection with its ticket business since 1999. Complainant submited invoices for its
advertising expenses as well as the statement of a local newspaper
representative confirming that Complainant has been conducting business under
its VANCOUVER TICKET SERVICE mark since 1999.
Complainant has spent more than $106,534. on
advertising in two of the local
Complainant contends that Respondent’s <vancouverticketservice.com>
domain name is identical to Complainant’s VANCOUVER TICKET SERVICE mark under
Policy ¶ 4(a)(i).
The disputed domain name incorporates Complainant’s entire VANCOUVER
TICKET SERVICE mark with the only alterations being the omission of spaces
between the terms in the mark and the affixation of the generic top-level
domain “.com.” The Panel finds that
these modifications are insufficient to negate a finding of identicality
pursuant to Policy ¶ 4(a)(i). Therefore, the Panel concludes that
Respondent’s <vancouverticketservice.com> domain name is identical
to Complainant’s VANCOUVER TICKET SERVICE mark under Policy ¶ 4(a)(i). See
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant 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 made a prima facie showing 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 to or legitimate interest in the subject domain names. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights to 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.”).
The disputed domain name resolves to Respondent’s commercial
website, which prominently displays Complainant’s VANCOUVER TICKET SERVICE
mark. Complainant contends that
Respondent is attempting to pass itself off as Complainant by offering ticket
services in direct competition with Complainant under Complainant’s VANCOUVER
TICKET SERVICE mark. The Panel agrees
and finds that Respondent’s attempt to pass itself off as Complainant on the
Internet is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Kmart of
Respondent is
listed in the WHOIS information as “Shane Bourdage.”
Complainant contends that Respondent is not commonly known by the
disputed domain name and Respondent conducts business under the name
“Coast2CoastTickets.” The Panel has not
reviewed any information in the record that would controvert Complainant’s
contentions and therefore, concludes that Respondent is not commonly known by
the <vancouverticketservice.com> domain name under Policy ¶
4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed 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).
Complainant asserts
that Respondent is a former employee of Complainant and that their business
relationship ended in 2007. Complainant
contends that after Respondent’s employment was terminated, Respondent
registered the identical disputed domain name to intentionally siphon Internet
traffic seeking Complainant and divert it to
Respondent’s competing commercial website.
The Panel finds that Respondent’s conduct is further evidence that
Respondent lacks rights and legitimate interests in the <vancouverticketservice.com>
domain name under Policy ¶ 4(a)(ii). See Savino
Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a
former employee does not acquire rights or legitimate interests in a domain
name identical to the former employer's trademark); see also Project HOPE v. Smith, FA 1142566 (Nat. Arb. Forum April
3, 2008) (finding that since the respondent was a former employee of the
complainant, and the disputed domain name is identical to the complainant’s
known mark, the respondent lacked rights and legitimate interests in the
disputed domain name).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
The disputed domain name is identical to Complainant’s mark but resolves to Respondent’s competing commercial website. The Panel finds that this diversion of Internet users to Respondent’s website disrupts Complainant’s business and thus, constitutes bad faith registration and use of the <vancouverticketservice.com> domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Respondent’s commercial website resolving from the <vancouverticketservice.com> domain name markets ticket services that are in direct competition with Complainant’s business. The Panel finds that Respondent is using the identical disputed domain name to generate revenue through its offer of competing services. Moreover, Respondent prominently displays Complainant’s VANCOUVER TICKET SERVICE mark on the disputed domain name, which appears to be an attempt to pass itself off as Complainant. Thus, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant contends that Respondent registered the disputed
domain name in 2007 after the business association between Complainant and
Respondent ended on poor terms. Based on
the chronology of events, the Panel finds that Respondent registered and used
the <vancouverticketservice.com> domain name in bad faith since
Respondent willfully registered the disputed domain name with full knowledge of
Complainant’s rights in the VANCOUVER TICKET SERVICE mark. Respondent knew the industry
and was a past employee of Complainant and acted in bad faith in
opportunistically using Complainant’s mark for Respondent’s own gain. See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb.
Forum Mar. 16, 2001) (finding bad faith use and registration where a
disgruntled former employee registered an infringing domain name to open an online
business that competed with the complainant); see also Savino Del Bene Inc.
v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) ("Respondent's
registration of the company name of his former employer as a domain name is an
act of bad faith.").
The Panel finds that Complainant satisfied the elements of ICANN 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 <vancouverticketservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 11, 2009.
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