Ticket Specialist, Inc. v. hubshift c/o
Donald Vaccaro
Claim Number: FA0510000575616
PARTIES
Complainant is Ticket
Specialist, Inc. (“Complainant”), represented by Roger Campo, 18345
Ventura Boulevard #
204, Tarzana, CA 91356.
Respondent is hubshift c/o Donald Vaccaro (“Respondent”), represented by Bruce Haraguchi, of Seyfarth Shaw LLP,
55 E. Monroe Street, Suite 4300, Chicago, IL 60603.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ticketspecialists.com>,
registered with DomainDiscover.
PANEL
The undersigned certify 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.
Sally M. Abel, Paul M. DeCicco and Alan L. Limbury as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 11, 2005; the National Arbitration Forum received a
hard copy of the Complaint on October 12, 2005. The Complaint named “hubshift” as Respondent.
On October 12, 2005, DomainDiscover confirmed by e-mail to the National
Arbitration Forum that the <ticketspecialists.com>
domain name is registered with DomainDiscover and stated that Donald Vaccaro is
the current registrant of the name. DomainDiscover
verified that the registrant is bound by the DomainDiscover 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 October 14, 2005, the National Arbitration Forum asked Complainant
to amend the Complaint, inter alia, "to more completely name the
Respondent as verified by the Registrar. The names <hubshift> and
<Donald Vaccaro> must be linked as the Respondent using one of the
following: <and>, <aka>,<dba>, or <c/o>." On
October 17, 2005, Complainant filed an amended Complaint which nominated
“hubshift c/o Donald Vaccaro” as Respondent.
On October 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 7, 2005 by which Respondent could file a Response to the amended
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@ticketspecialists.com by
e-mail.
A timely Response was received and determined to be complete on November
7, 2005. The Response named “hubshift” as Respondent.
On November 14, 2005 Complainant filed an additional submission in a
timely manner according to the Forum’s Supplementary Rule No. 7.
On November 17, 2005, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Sally M. Abel, Paul M. DeCicco and Alan L.
Limbury as Panelists.
On November 21, 2005, Respondent submitted a timely response to
Complainant’s additional submission.
On November 22, 2005, at Complainant’s request, the National Arbitration Forum forwarded to
the Panel copies of email correspondence between the National Arbitration Forum and Complainant concerning ownership of
the disputed domain name. On November 23, 2005, Respondent filed an unsolicited
Response to that correspondence. On November 26, 2005, Complainant objected to
the reception of Respondent’s unsolicited submission and filed an unsolicited
Reply. On November 28, 2005, Complainant filed a further unsolicited submission
and on November 30, 2005, the Respondent filed a response to that. The National
Arbitration Forum forwarded all of this material to the Panel.
On December 1, 2005 the National Arbitration Forum notified the parties
of the Panel’s decision that it would not receive any more unsolicited
submissions and will rule in due course on whether it will give regard to any
of them. The parties were also informed that the Panel expected to render its
decision on or before December 5, 2005 in light of the voluminous additional
submissions received: see Rule 15(b).
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant claims common law rights in the service marks TICKET SPECIALIST
(since 1994) and TICKETSPECIALIST.COM (since 1998) in connection with ticket
agency services in the fields of theater, concerts and sporting events. It
claims to have invested over $100,000 since 1994 in developing and marketing
its marks, both domestically and internationally.
On February 4, 1994, Complainant’s representative in this proceeding,
Roger Campo, a ticket broker, registered the business name ‘Ticket Specialist’
in California. On April 27, 1998, Roger Campo registered the
<ticketspecialist.com> domain name in the name of Ticket Specialist as
registrant.
On August
17, 2003, Respondent registered the disputed domain name, nine years after
Complainant’s claimed adoption and first use of its TICKET SPECIALIST mark and
over five years after Complainant’s claimed ‘registration and first use’ of its
TICKETSPECIALIST.COM mark. In this regard, Complainant annexes a WHOIS search
showing the registrant of the disputed domain name as “hubshift.”
On September 15, 2005, Complainant applied for U.S federal trademark
registration of TICKET SPECIALIST, in connection with ticket agency services in
the fields of theater, concerts and sporting events, claiming first use on
April 1, 1994. The application has not yet been examined.
On September 29, 2005, Complainant obtained registration in the State
of Illinois of the TICKET SPECIALIST service mark (No. 094940) for five years,
in connection with ticket agency services in the fields of theater, concerts
and sporting events, based on claimed first use in Illinois on April 1, 1994.
On October 4, 2005, Complainant obtained registration in the State of
Illinois of the TICKETSPECIALIST.COM service mark (No. 094952) for five years,
in connection with ticket agency services in the fields of theater, concerts
and sporting events, based on claimed first use in Illinois on April 28, 1998.
Complainant says the disputed domain name is confusingly similar and
nearly identical to its marks and that Respondent registered and used the
disputed domain name in bad faith and thus is not making a legitimate
non-commercial or fair use of the domain name. Complainant believes Respondent
owns other ticket businesses and that its primary business is another ticket
company with an entirely different name. Complainant asserts Respondent is
engaging in ‘typosquatting’ to capitalize on Complainant’s business by
misdirecting to Respondent’s competing website Internet users seeking
Complainant’s services, since Respondent was clearly aware of Complainant, its
mark and its ten year use of the domain name.
Respondent’s bad faith is demonstrated by numerous pages of its website
which use Complainant’s exact mark, as in “[name of city] Ticket Broker.
Welcome to the Ticket Specialist [name of city] Ticket Broker Page”, including
one such page naming as the city “Los Angeles,” where Respondent does not have
an office but where Complainant does.
Complainant says that any Internet user attempting to locate
Complainant would likely do a typical Google search of “Ticket Specialist” and
“Los Angeles.” The results prominently
display links to Respondent’s site twice on the very first page.
Further, Complainant says it is concerned that Respondent is conducting
its business in a manner detrimental to Complainant’s reputation, in that the
telephone number of the domain name registrant is that of somebody else and
Complainant has received emails and telephone calls from dissatisfied customers
of Respondent.
Having been required by the National Arbitration Forum, the UDRP
dispute resolution provider in this matter, to amend the Complaint so as to
link the name Donald Vaccaro with the name “hubshift,” Complainant says in its amended Complaint that it has
reason to believe that Donald Vaccaro is not the true owner of “hubshift” nor of the disputed domain
name. Complainant says it called the toll free number listed on Respondent’s
website and was told the owner of Ticket Specialists is David Jacob.
B. Respondent
The Response says Complainant has failed to establish exclusive rights
to its claimed marks because the words Ticket and Specialist(s) are generic or
at least highly descriptive, with no evidence here of secondary meaning, nor
any evidence of use in commerce by Complainant.
The Response includes an affidavit sworn by David Jacobs saying that
Respondent is an Illinois company, ‘hubshift LLC,’ owned by Mr. Jacobs, and
that it is the registrant of the disputed domain name. Since May 2005, hubshift has offered tickets for sale
on the web site it operates at <ticketspecialists.com> and, prior
to receiving this Complaint, had thereby developed a substantial business. The
terms “Ticket Specialist” and “Ticket Specialists” were selected and used in
connection with the web site because of their generic meaning relating to
ticket sales and personnel. The last digit of the telephone number recorded in
the registration information is incorrect and was entered through clerical
error. An invoice for the correct number is annexed.
Hubshift says it has a legitimate right to use the disputed domain name
generically because it provides ticket information and sells tickets on the
website, reflecting common industry practice; that this disposes of
Complainant’s case on bad faith also and that none of the specific instances of
alleged bad faith is established.
C. Additional Submissions
In its formal additional submission, Complainant objects to
Respondent’s nominated candidates to serve as panelists, pointing to a claimed
business connection between the firm of attorneys representing Respondent and
the firm of which one panelist is a partner. [This issue has been addressed in
the process of appointment of each of the undersigned panelists, one of whom
was nominated by Respondent and all of whom have certified 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.]
Complainant proffers evidence that it contends establishes that it has
exclusive rights to the terms “Ticket Specialist” and “Ticket Specialists.”
Complainant says the wide publicity, promotion and advertisement of the name in
domestic and international media, as evidenced in its additional submission,
has given secondary meaning to the name, thus taking away its “generic
descriptive character.” Whilst it accepts that the term “ticket specialist” has
been used by other enterprises, Complainant says “it has not remained generic,”
having acquired secondary meaning.
Complainant annexes a letter to the National
Arbitration Forum dated November 8, 2005 from Mr. Doug Knittle, Founder
and Chief Special Events Officer of Razorgator, “the worldwide leader in the
secondary ticket industry for sold-out sports and entertainment events,”
saying:
I have had the pleasure of doing business with Roger Campo and [another person] of Ticket Specialist since 1998. I have bought and sold large quantities of tickets through this established company…[A]mong large international ticket agencies, Ticket Specialist is a known and reliable source for tickets and the only company named Ticket Specialist that I am aware of.
Complainant provides copies of classified print advertisements in which
it has used the expressions “Ticket Specialist” and “ticketspecialist.com,”
such as “2002 Olympics Best Price – All Events TicketSpecialist.com [phone,
address],” the earliest dated June 17, 1994. Complainant also provides evidence
of revenues it has generated.
Complainant
says one of the documents on which Respondent relies is a report issued by
“Ticket Network/Ticket Software LLC,” of which the President and Founder is
Donald Vaccaro, yet Respondent offers this as evidence of its own sales
figures. Complainant suggests the identity of the “Site Owner” has been
redacted from the report and queries why this would be so if Respondent is the
owner of the site.
Complainant produces evidence that David Jacobs is also President of
Onlineseats.com, Inc, incorporated in Illinois on March 24, 2003.
As to bad faith, Complainant claims the <ticketspecialists.com>
website improperly displays the Better Business Bureau logo. Complainant
also points to evidence of confusion as indicative of Respondent’s bad faith;
casts doubt on the ownership of the domain name and relies on what it describes
as “multiple layers of fraudulent activity and misinformation” on the part of Respondent.
The supplementary Response joins issue with all Complainant’s
contentions, saying in particular that Complainant’s admissions of genericness
are fatal to its claims of an exclusive mark; that Complainant’s evidence of
secondary meaning is insufficient to overcome the predominant generic meaning
that has been acknowledged by both parties; that Complainant’s pending U.S.
trademark application confers no rights; that hubshift conducts a legitimate business at <ticketspecialists.com>;
that Onlineseats.com and hubshift LLC are in common ownership and the disputed
domain name serves both businesses and accurately describes their services;
that the disputed domain name was acquired from Robert Vaccaro in an arm’s
length transaction; that Mr. Vaccaro’s business Ticket Software LLC provides
services to hubshift; that the
sales figures challenged by Complainant are in fact hubshift’s sales; that a more rational explanation than
Respondent’s intent to capitalize on any confusion is that the generic terms
“ticket specialist” and “ticket specialists” effectively convey who hubshift is and what it does, such
that customers who have never heard of Respondent are able immediately to
identify hubshift’s business,
so there is no incentive for it to base its business on creating confusion with
another entity; that the term “Ticket Specialist Los Angeles Ticket Broker
Page” do not show that hubshift
is creating any confusion with Complainant; that following Complainant’s
allegation concerning the alleged misuse of the Better Business Bureau logo on hubshift’s website, the Chicago
office of that Bureau has confirmed that the logo may be used on the <ticketspecialists.com>
website by reason of the relationship between hubshift and OnlineSeats.com.
In its email correspondence with the National Arbitration Forum following the additional Response,
Complainant says it has confirmed with the Registrar that Donald
Vaccaro is the true owner of the domain name and contends that Mr. Vaccaro
has defaulted by not responding to the Complaint. Alternatively, if hubshift has the legal authority to
respond, then Complainant contends that hubshift has
defaulted by knowingly and purposely omitting Donald Vaccaro's name from the
case caption of its Response. In either case, Complainant argues that
Respondent's Response and Additional Written Statement should be considered
invalid and immediately withdrawn from consideration by the
Panelists.
Complainant further complains that Mr. Vaccaro tried to effect a change
of registrant after the domain name was locked for the duration of this
proceeding and that this demonstrates bad faith.
FINDINGS
Complainant has failed to establish all three
elements necessary to entitle it to relief.
DISCUSSION
Supplementary
submissions
The Uniform Rules provide only for
the filing of a Complaint and a Response (Rules 3 and 5) unless the Panel
requests further statements or documents (in addition to the Complaint and the
Response) from either of the parties (Rule 12). The National Arbitration Forum's
Supplemental Rule 7 provides that either
Complainant or Respondent may make additional submissions. This has been held
by a three-member Panel to be inconsistent with the Policy and the Rules. See
Am. Online Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002).
Another view is that Rule 8 permits a Provider to spell out the items that make
up the record for the Panel to consider, including properly filed additional
submissions: see Prudential Ins. v.
Arzaga Mktg. Co., FA 106104 (Nat. Arb. Forum May 13, 2002). That Rule
provides:
“8.
Communication Between Parties and the Panel
No Party or anyone acting on its behalf may
have any unilateral communication with the Panel. All communications between a
Party and the Panel or the Provider shall be made to a case administrator
appointed by the Provider in the manner prescribed in the Provider's
Supplemental Rules."
Having regard to Rule 12, it seems to this Panel that Rule 8 is
concerned with the manner of communication rather than with permitting
Providers to allow the parties to make further submissions as a matter of
right. Accordingly, it is for the Panel to make the final determination
regarding what it will consider.
Here, purely as an indulgence to the parties, having regard to the
considerable work that they have done in their preparation, the Panel has given
regard to the formal supplementary submissions, despite their frequent
repetition of matters already addressed in the amended Complaint and Response.
This means, in particular, that the Panel has considered the evidence provided
by Complainant in its supplementary submission addressing the issue of common
law rights, evidence which should have been included in the Complaint.
As to whether the Response and additional Response should be
disregarded on the ground put forward by Complainant, namely that Donald
Vaccaro is the true owner of the domain name (contrary to the submission in its
amended Complaint), so that he should have been mentioned in the title to those
documents, the WHOIS material before the Panel at the time when those
submissions were made (provided by Complainant) revealed the disputed domain
name as being registered in the name “hubshift.” Complainant so entitled the
Complaint when originally filed. When asked by the National Arbitration Forum,
based on information provided by the Registrar, to link that name with Mr.
Vaccaro, “using one of the following: <and>, <aka>,<dba>, or
<c/o>,” Complainant chose the link “c/o,” meaning “care of,” thereby
clearly designating “hubshift”
as a separate entity from Mr. Vaccaro.
The Panel accepts the affidavit of Mr. Jacobs insofar as he says that
he is the owner of hubshift LLC and that the disputed domain name was acquired
from Mr. Vaccaro in an arms length transaction and has subsequently been used
for several months in its ticket agency business before the filing of the
Complaint. Having regard to the fact that the WHOIS search exhibited to the
Complaint shows hubshift as
registrant, the Panel does not regard the Response and additional Response as
being in default simply because they do not mention Mr. Vaccaro in the
title. Accordingly the Panel has given
regard to them.
Again, purely as an indulgence to the parties and in order to ensure
fairness to both, the Panel has given regard to the additional correspondence
and unsolicited submissions on both sides and to their exhibits. They further address the issue of who is the
registrant of the domain name, to which we now turn.
Who is the registrant?
On the material before the Panel it appears that the disputed domain
name was registered in the name of Donald Vaccaro and was sold by him to
OnlineSeats.com in an arms length transaction on March 14, 2005. Inexplicably,
current publicly available material shows hubshift as registrant yet the Registrar as late as November 22,
2005 confirmed that the registrant remains Mr. Vaccaro. Following commencement
of these proceedings Mr. Vaccaro authorized the Registrar to change the
registrant to a Mr. Zonis, a co-owner and manager of hubshift. That transfer did
not proceed because of the Rules requiring the domain name to remain locked
during UDRP proceedings. The Panel concludes that the registrant of the domain
name remains Donald Vaccaro because the Registrar has not changed its own
records to reflect the transfer to hubshift LLC.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
For U.S. cases, see, for example, Sporty’s Farm L.L.C. v. Sportsman’s Market,
Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the
trademark “sporty’s” and the domain name “sportys.com” – specifically, an
apostrophe in the trademark and the addition of .com in the domain name – are “inconsequential”, such that the
domain name is “indistinguishable” from and “certainly ‘confusingly similar’ to
the protected mark).
Likewise, many cases have established that
the test of confusing similarity under the Policy is confined to a comparison
of the disputed domain name and the trademark alone, independent of the other
marketing and use factors, such as the "Sleekcraft factors" (AMF Inc. v. Sleekcraft Boats, 599 F.2d
341, 346 (9th Cir. 1979)) usually considered in trademark infringement or
unfair competition cases. See, e.g.,
Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19,
2001) and the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club
2000 U.S. Dist. LEXIS 4732 (D. Mass. 2000).
Applying these tests, there is no doubt the
disputed domain name is virtually identical and confusingly similar to the
terms ‘Ticket Specialist’ and ‘ticketspecialist.com.’ The critical issue is
whether Complainant has trademark rights in either claimed mark. In the field of ticket agency services,
those terms are either generic or at least descriptive of providers of ticket
agency services. There is evidence of substantial third party use of ‘Ticket
Specialist’ in this field. Complainant has conceded that the term was generic
but contends it has not remained so and has lost its generic character as a
result of Complainant’s trademark use, which it contends has given rise to
common law rights.
One
difficulty with this argument is that the mark which Complainant concedes “has
lost its generic character” is being used by Complainant in the very field in
which it has (or is said to have had) generic character. It would be different were the generic mark
used in an entirely different field, such as use of the APPLE mark in
connection with computers. In such circumstances, it cannot lose that character
through use, however extensive: In re Preformed Line Prods. Co., 323
F.2d 1007 (C.C.P.A. 1963); In re Med.
Disposables Co., 25 U.S.P.Q2d 1801 (T.T.A.B. 1992) (“Inasmuch as we have
found the term MEDICAL DISPOSABLES to be generic, the question of whether or
not it has acquired secondary meaning is irrelevant”).
Even approaching this case on the basis that
Complainant contends its marks are descriptive, to succeed in a Complaint under
the Policy in relation to an unregistered
mark, it is necessary for Complainant to prove that it has, through use,
acquired secondary meaning, i.e. a reputation such that members of the public
associate those goods or services solely with Complainant or its licensees. British
Heart Found. v. Meyer, AF-0957 (eResolution Aug. 22, 2001).
Having considered all the evidence put
forward by Complainant, the Panel is not satisfied that Complainant has
demonstrated to the Panel that either of the terms ‘Ticket Specialist’ or
‘ticketspecialist.com’ has come to distinguish its services from those of
others in the field of providing ticket agency services. The alleged trademark
uses on which Complainant relies appear to the Panel to be no more than use of
a business name or web address and there is no evidence of the perception of
the public as to those terms.
The letter from Mr. Knittle, written after
the filing of the Response, does not establish secondary meaning. If
Complainant’s activities have resulted in those terms becoming distinctive of
its services, Complainant has not produced evidence proving this to the Panel.
Complainant also relies on its pending application for Federal
trademark registration, and its Illinois State trademark registrations, all
filed some two years after the disputed domain name was registered.
U.S. trademark applications do not give rise to trademark rights. See
PlasmaNet, Inc. v. Zuccarini, D2002-1101 (WIPO Feb. 11, 2003) (“[A] trademark
application for a descriptive phrase does not establish trademark rights. If it
did, the UDRP Panel would be replacing its own judgment for that of the USPTO
as to when or if a particularly descriptive phrase acquires secondary
meaning.”); see also Bar Code Disc. Warehouse, Inc. v. Barcodes, Inc.,
D2001-0405 (WIPO July 27, 2001) (“[A]n application for registration standing
alone establishes neither rights nor presumptions.”); see also Not My Kid,
Inc. v. Sawchak, FA 167978 (Nat. Arb. Forum Sept. 23, 2003) (finding that
the complainant’s proffered evidence of a pending service mark application with
the United States Patent and Trademark Office for its mark was insufficient to
establish rights in the mark under the Policy).
Some UDRP decisions have found
State trademark registrations do give sufficient rights to a Complainant to
maintain proceedings under the Policy: See Lee Enters., Inc. v. Polanski, FA
135619 (Nat. Arb. Forum Jan. 22, 2003) (finding rights in a mark through
registration with the Montana and Wyoming state trademark offices); see also
Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349
(Nat. Arb. Forum Sept. 7, 2002) (finding trademark registrations in
Pennsylvania and New Jersey provide sufficient standing to bring a claim under
the Policy). This Panel is not bound by those decisions, although there are
advantages to all participants in the resolution of domain name disputes under
the Policy for Panels to achieve a degree of consistency in approaching similar
facts. See Howard Jarvis Taxpayers Ass’n v. McCauley, D2004-0014 (WIPO Apr. 22, 2004).
From the evidence presented here it appears that Complainant lacks rights because of the generic nature of the claimed marks. However the Illinois registrations, even though not examined for distinctiveness, could be said to weigh on the side of Complainant having at least some trademark rights. It is unnecessary for the Panel to resolve this issue because, even assuming, arguendo, that it has trademark rights, as shown below Complainant has failed to establish the other two elements required to entitle it to relief.
Panels have consistently found that once a
complainant establishes a prima facie case against the respondent, the
burden is on a respondent to provide evidence of its rights or legitimate
interests under paragraph 4(c) of the Policy. For a recent affirmation of that
principle, see, for example, Cassava Enters. Ltd. v. Victor Chandler Int’l
Ltd., D2004-0753 (WIPO Apr. 22, 2004).
Here there is no evidence that Complainant
had any trademark rights when Mr. Vaccaro registered the disputed domain name,
nor when OnlineSeats.com acquired it
from Mr. Vaccaro in a transaction that remains unperfected by the intended
registration in the name of hubshift. This alone compels the conclusion that
Respondent has a legitimate interest in the domain name, whether Respondent be
treated as Mr. Vaccaro, OnlineSeats.com or
hubshift. See Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding of rights
or legitimate interests where registration of the domain name occurred before
complainant had established rights in its alleged mark); see also Latent Tech. Group, Inc. v. Fritchie, FA
95285 (Nat. Arb. Forum Sept. 1, 2000) (finding legitimate interest where the
complainant applied for registration of the mark after the respondent
registered the domain name and the complainant had not proven earlier use of the
mark).
Here the disputed domain name comprises a
generic or, at least, descriptive term apt to describe the business of
providing ticket agency services. Accordingly, there is no reason to suppose
that Mr. Vaccaro was aware of Complainant or needed Complainant’s permission
before registering the disputed domain name.
Even if Mr. Vaccaro had been aware of
Complainant’s use of its claimed common law marks before he registered the
disputed domain name (as to which there is no evidence here), the Panel’s
finding that Complainant has not proven to the Panel that those marks were or
had become distinctive of Complainant’s services would inevitably lead to the
conclusion that Mr. Vaccaro chose to use terms commonly used in the field of
ticket agency services accurately to describe his services of that kind, since
he is also a participant in that field through his own company. On the same
reasoning, the same conclusion would follow, whether Respondent were considered
to be Mr. Vaccaro, OnlineSeats.com or hubshift.
Complainant has failed to establish a prima facie case.
Even if Complainant has established a prima facie case, there is nothing to
impugn the arms length nature of the sale of the disputed domain name by Mr.
Vaccaro to OnlineSeats.com, a sister company of hubshift. By
Complainant’s own admission, OnlineSeats.com
and hubshift have ticket
businesses and, for five months prior to this Complaint, hubshift has used the disputed domain
name in connection with them. These circumstances establish legitimate rights
and interests in the disputed domain name on the part of Respondent, whichever
of those three persons is considered the Respondent in this proceeding.
Complainant has failed to establish this
element of its case.
Where, as here, any trademark rights arose after the registration of
the disputed domain name, a finding of bad faith registration and use is rare.
Such a finding has been made in merger cases in which, although the merged
entity name (combining the names of the merging entities) did not become a
trademark until after domain name registration, their individual names were
trademarks before the merger announcement. See
A.P. Møller v. Web Soc’y, D2000-0135 (WIPO Apr. 15, 2000); SMS Demag AG v. Seung Gon, Kim, D2000-1434 (WIPO Jan. 19, 2001); Konica Corp. v. IC, D2003-0112 (WIPO Mar. 31, 2003); Clifford Chance LLP v. CPIC Inc., D2000-1603 (WIPO Jan. 28, 2001); Santander
Inv. Bank Ltd. v. Divisas Mexicanas, S.A. de C.V., D2004-0475 (WIPO Aug. 30, 2004). For other rare cases where
bad faith has been found although the mark post-dated the domain name, see eGalaxy Multimedia Inc v. T1, FA 101823 (Nat. Arb. Forum Dec. 23, 2001) and Bragg
v. Condon, FA 92528 (Nat. Arb.
Forum Mar. 2, 2000).
None of the circumstances in which those special cases were decided are present here. Mr. Vaccaro registered the disputed domain name. The only allegation of bad faith made against him is that after the commencement of these proceedings he sought to have his sale perfected by asking the Registrar to transfer the registration to a co-owner and manager of hubshift. Such action, albeit ineffectual, cannot possibly prove bad faith registration in 2003. OnlineSeats.com simply acquired a domain name comprising a term widely used in the ticket agency industry to convey to the public the nature of its business and that of its sister company hubshift, which used the domain name for that purpose prior to Complainant acquiring any trademark rights. Neither of those companies is shown either to have registered nor to have used the disputed domain name in bad faith. True, the domain name and Complainant’s marks are confusingly similar, but the price to be paid by Complainant for the advantages flowing from its choice of an eloquently descriptive trade name is that its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. Unless the risk of confusion is accepted, one who appropriates to himself descriptive words would acquire an unfair monopoly in them and might even deter others from pursuing the occupation which the words describe.
Complainant has failed to establish this
element of its case.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Presiding Panelist
Sally M. Abel Paul
M. DeCicco
Panelist Panelist
Dated: December 5, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum