Ticketmaster Corp. v. Harold R. Brown II and Ted Waitt

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown

III, and Ted Waitt

Case No. D2001-0716

1. The Parties

Complainant is Ticketmaster Corporation, 3701 Wilshire Boulevard, Los Angeles,

California 90010, U.S.A.

The respondents are Harold R. Brown, II and Ted Waitt, 703 Pier Avenue, Suite

B-198, Hermosa Beach, California 90254, U.S.A. (registrants of <urn2ticketmaster.com>)

and Harold R. Brown III, 703 Pier Avenue, Suite B-198, Hermosa Beach, California

90243, U.S.A. (registrant of <urn2ticketmaster.net> and <urn2ticketmaster.org>).

2. The Domain Names and Registrar

The domain names in issue are: <urn2ticketmaster.com>, <urn2ticketmaster.net>,

<urn2ticketmaster.org> (the "Domain Names").

The registrar is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon,

Virginia 20170.

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received Ticketmaster’s

complaint via e-mail on May 30, 2001, and in hardcopy on June 5, 2001. The Center

forwarded a copy of the complaint to Respondents, notifying them that there

was a complaint filed against them but that they had no duty to act at that

time. The transmittal further stated that after the Center verified that the

complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy

(the Rules), the Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the Supplemental Rules), and the Uniform Domain Name Dispute Resolution

Policy (the Policy), it would send Respondents an official copy of the complaint

after which Respondents would have 20 days to respond. The letter further

directed Respondents to the web sites where the Rules, Supplemental Rules, and

Policy could be found.

The Center contacted NSI on June 1, 2001, requesting verification of the Domain

Names’ registration. On June 4, 2001, the Center received confirmation from

NSI that:

1) Complainant had sent it a copy of the complaint, 2) the Domain Names were

registered with NSI, 3) Respondents are the current registrants, 4) the Policy

applies to the Domain Names, and 5) the current status of the Domain Names was

active. NSI additionally confirmed the contact names, addresses, email addresses,

and phone and facsimile numbers for the organization, administrative, and technical

contacts for the Domain Names.

Because the original complaint had omitted one of the registrants (Harold R.

Brown, III), the Center, on June 7, 2001, requested that Ticketmaster file an

amendment to the complaint. The amendment was received via email on June 8,

2001, and in hardcopy on June 11, 2001. The three registrants should be considered

as the same entity, taking into account the identical contact details given

for the three domain names.

After verifying that the amended complaint (henceforth, the "Complaint")

complied with the formal requirements of the Rules, Supplemental Rules, and

Policy, the Center notified the registrants and technical contacts on June 13,

2001, of the commencement of the administrative proceeding. It notified Respondents

that Complainant had submitted a complaint as described above. The notification

also stated that the Complaint satisfied the formal requirements of the Policy,

Rules, and Supplemental Rules and the appropriate payment had been made. Accordingly,

the administrative proceeding commenced on June 13, 2001. The notification invited

Respondents to reply by July 2, 2001, in accordance with Paragraph 5 of

the Rules and the Supplemental Rules. Furthermore, the notification identified

the consequences of default, namely that a Panel would still decide the case

and that, in accordance with Rules, Paragraph 14, the Panel could draw any appropriate

inferences from the default. The notification additionally notified Respondents

that Complainant elected a single member panel who would be appointed within

five days after the Response was due. In the event that Respondents preferred

a three member panel, Respondents could so designate, with the required payment,

and would have the option to nominate three panelists for possible inclusion

on the panel. Finally, Respondents were notified of the identity and contact

information of the Case Manager. A copy of the notification was e-mailed to

Complainant.

Having received no response to the notification by the July 3, 2001, deadline,

the Center issued a Notification of Respondent Default on July 5, 2001. The

notice stated that the Center would appoint a single panelist to comprise the

Panel, the Panel would be informed of Respondents’ default and it would be up

to the Panel’s discretion whether to consider any late-filed Response. Finally,

the notice stated that the Center would continue to send case-related materials

to Respondents as it deemed appropriate.

On July 13, 2001, Complainant was advised of the identity of the undersigned

sole panelist. Additionally, the Center notified Complainant that the panelist

had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance

and Declaration of Impartiality and Independence to the WIPO Arbitration and

Mediation Center.

4. Factual Background; Parties’ Contentions

a. The Trademark

Ticketmaster’s Complaint alleges that its TICKETMASTER mark is a distinctive,

federally registered, and world famous trademark. Ticketmaster has invested

substantial resources in promoting its mark worldwide. Ticketmaster has registered

variations on its TICKETMASTER mark in over 50 countries throughout the world,

as shown in Exhibit E to the Complaint. Ticketmaster’s federal registration

in the United States for its TICKETMASTER trademark predates the Respondents’

registration of the domain names at issue here.

Additionally, Ticketmaster conducts business on the Internet at various domains

which contain "ticketmaster" as part of the domain name (e.g. <ticketmaster.com>,

<ticketmaster.ca>, <ticketmaster.com.mx>, <ticketmaster.ie>,

etc.). Ticketmaster applied to register the first of these, <ticketmaster.com>,

on the Principal Register of the United States Patent and Trademark Office,

which application has been allowed and registration is pending.

b. Jurisdictional Basis

As stated, NSI verified that the Policy applies to the Domain Names. Therefore,

as this proceeding is likewise governed by the Policy in accordance with it,

the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide

this dispute.

c. The Complaint

Ticketmaster asserts as follows:

• The registered TICKETMASTER mark has worldwide recognition.

• The disputed Domain Names are confusingly similar to the trademarks TICKETMASTER

and TICKETMASTER.COM.

• Addition of the characters "urn2" (which may be pronounced "You

Are Into" according to the Complaint and Respondents’ web site) to the

TICKETMASTER trademark in creating a domain name does not alter the mark in

a way that would reduce the likelihood of confusion.

• Complainant has made substantial commercial use of the TICKETMASTER mark

prior to Respondents’ registration of the Domain Names.

• Respondents are not licensees and therefore have no legitimate interest in

the Domain Names or in the TICKETMASTER mark.

• Respondents have not engaged in commercial activity under the TICKETMASTER

mark, nor have they set forth any legitimate right to use the Domain Names.

• Respondents have failed to use the Domain Names to engage in any legitimate

non-commercial or fair use.

• Respondents have registered and used the Domain Names in bad faith. Further,

Respondents have engaged in a pattern of such behavior by registering thousands

of domain names which follow the form of "urn2" followed by a famous

trademark, including <urn2ibm.com> and <urn2visa.com>.

d. Response

As noted above, Respondents have provided no response, although the deadline

for doing so expired on July 3, 2001. Accordingly, the Respondents are in default.

Given Respondents’ default, the panel can infer that Complainant’s allegations

are true where appropriate to do so. Talk City Inc. v. Michael Robertson,

D2000-0009 (WIPO Feb. 29, 2000). Nonetheless,

Complainant retains the burden of proving the three requisite elements of Paragraph

4(a).

5. Discussion and Findings

Accordingly, the Panel now proceeds to consider this matter on the merits in

light of the Complaint, uncontested as no response was filed, the Policy, the

Rules, and other applicable authority.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect

to each Domain Name, each of the following:

(i) The domain name in issue is identical or confusingly similar to Ticketmaster’s

trademarks in issue here; and

(ii) Respondents have no rights or legitimate interests in respect of the domain

name; and

(iii) The domain name was registered and is being used in bad faith.

a. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondents

have failed to rebut any of the factual assertions made and supported by evidence

submitted by Complainant. The Panel does not, however, draw any inferences from

the default other than those that have been established or can fairly be inferred

from the facts presented to the Panel by Complainant and that, as a result of

the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondents have failed

to offer the Panel any of the types of evidence set forth in Paragraph 4(c)

of the Policy from which the Panel might conclude that Respondents have any

rights or legitimate interest in the Domain Names, such as use or preparation

to use the Domain Names prior to notice of the dispute, being commonly known

by the Domain Names, or making legitimate noncommercial or fair use of the Domain

Names.

b. Complainant’s Proof

(i) Domain Names Confusingly Similar to Trademark

The Domain Names are alleged to be confusingly similar to certain registered

trademarks of Complainant, Ticketmaster. Specifically, the Domain Names add

the characters "urn2" before the mark TICKETMASTER and the generic

top level domain (TLD) ".com." Because web users typically add a TLD

such as ".com" or ".net" to a mark when attempting to locate

the mark’s owner on the Internet, and because the TLD is a functional necessity

rather than an arbitrary trademark choice, the TLD is properly ignored when

considering similarity. See College Summit, Inc. v. Yarmouth Educational

Consultants, Inc., D2000-1575 (WIPO,

Jan. 17, 2001). The addition of a non-distinctive prefix to a well known trademark

to form a domain name does nothing, at least in this case, to reduce that domain

name’s confusing similarity to the famous mark. See Nintendo of America

Inc. v. Daniel Lopez dba Creative Strategies, D2000-1166

(WIPO, Dec. 8, 2000). Because the Domain Names are confusingly similar to Complainant’s

marks, the Panel concludes that the requirement of Paragraph 4(a)(i) of the

Policy has been met.

Furthermore, marks that have a "high degree of inherent or acquired distinctiveness"

are entitled to a greater scope of protection. Digital City Inc. v. Smalldomain,

D2000-1283 (WIPO, Nov. 6, 2000). Ticketmaster

has demonstrated that its longstanding use of the TICKETMASTER mark and variants

thereof, its very high volume of business transacted under or in connection

with the mark, as well as the worldwide use and recognition of the mark, places

its mark in the category of trademarks with a "high degree of … acquired

distinctiveness" and the marks, accordingly, enjoy a wide scope of protection.

For all the above reasons, the Panel concludes that the domain name is confusingly

similar to Ticketmaster's marks.

(ii) Whether Respondents Have Rights Or Legitimate Interest In the Domain Names.

There is no evidence in the record that Respondents have any legitimate interest

in the Domain Names. The fame, distinctiveness, strength, and priority of use

of Complainant’s marks, coupled with the Domain Names’ confusing similarity

to Complainant’s marks and Respondents’ failure to advance any of the defenses

provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondents

have no rights or legitimate interest in the Domain Names.

(iii) Registration and Use in Bad Faith

A. The .com Domain Name

As guidance in determining whether the bad faith requirement is met, Paragraph

4(b) of the Policy sets forth four non-exclusive illustrations of fact patterns

that can evidence registration and use of a domain name in bad faith.

The first illustrative scenario is if a respondent has "registered or

… acquired the domain name primarily for the purpose of selling, renting, or

otherwise transferring the domain name registration to the complainant who is

the owner of the trademark … for valuable consideration in excess of documented

out of pocket costs directly related to the domain name." In Exhibits H

and I of the Complaint, Ticketmaster submits copies of Respondents’ web pages

where Respondents claim to have registered thousands of domain names. Many of

these names use the identical format: the prefix "urn2" followed by

widely known and famous trademarks or their variants. On these sites, Respondents

offer to sell the domain names in prices ranging from $300 to $3,000. In particular,

Respondents have offered to sell the <urn2ticketmaster.com> domain name

for $1,000. Complainant plausibly alleges, and Respondents have not denied,

that this listed price is in excess of documented out of pocket costs directly

related to that Domain Name. On the above facts, the Panel concludes that Respondents’

intent in registering that Domain Name was to extract value in excess of registration

costs.

The policy requires that intent to sell a domain name for profit be the primary

purpose for obtaining the domain name, if it is to meet this first illustrative

example of bad faith. Here, Respondents do not appear to have used the Domain

Names for any other purpose. It has no web site accessible at two of the Domain

Names (the .net and .org TLDs); and the .com web site is a listing of myriad

domain names beginning with "urn2" which are available for sale, including

<urn2ticketmaster.com>. There is no evidence of record which suggests

that Respondents are making any other use of the Domain Names. Accordingly,

leveraging the <urn2ticketmaster.com> Domain Name’s value to Ticketmaster

appears to have been Respondents’ sole, and thus, primary purpose. Respondents’

failure to respond to the Complaint and provide any contrary contentions further

supports this conclusion. Other UDRP panels have likewise found that these same

Respondents’ registration of certain other domain names that preface famous

trademarks by the characters "urn2" constituted bad faith. See

Perot Systems Corp. v. Harold Brown III, FA97303 (N.A.F. June 25, 2001)

(ordering transfer of <urn2perotsystems.net> and <urn2perotsystems.org>);

Victoria’s Secret v. Harold R. Brown II/Ted Waitt, FA96561 (N.A.F. March

19, 2001) (ordering transfer of <urn2victoriassecret.com> and <urn2victoriassecrets.com>).

The Panel therefore finds that Respondents engaged in bad faith registration

and use of the <urn2ticketmaster.com> Domain Name as illustrated by paragraph

of 4(b)(i) of the Policy (Footnote 1).

In light of the illustration discussed above, which alone suffices under the

Policy to demonstrate registration and use in bad faith, the Panel finds that

there is sufficient evidence to support Complainant’s allegation that Respondents

have registered and used the Domain Names in bad faith.

B. The .net And .org Domain Names

Complainant seeks to tar the other two Domain Names with the same brush, stating

in paragraph 21 of the Complaint that "Respondents are attempting to sell

‘over 5,000 domain names,’ including the Infringing Domain Names."

Not so fast. There is no evidence before this Panel that Respondents have made

any attempt to sell the .org or .net Domain Names at issue here. The web site

to which Complainant refers as support for its contention only contains offers

to sell domain names with a .com TLD. Complainant must make a different showing

of bad faith as to the .net and .org TLDs if it is to prevail with respect to

these two Domain Names. The Complainant’s assertion that Respondents have offered

to sell "the Infringing Domain Names" (plural) is unsupported by the

cited evidence, which only establishes that one of the three domain names has

been offered for sale.

Although Complainant has not offered evidence of any offers to sell the .net

or .org Domain Names, it has offered other evidence which, in the opinion of

this Panel, suffices to warrant a finding of bad faith with respect to these

Domain Names as well.

First, Respondents’ ownership of several domain names which are variations

of Ticketmaster’s mark, as well as a large number of other domain names containing

famous trademarks belonging to other entities, evidences their bad faith. See

J.P. Morgan v. Resource Marketing, D2000-0035

(WIPO, Mar. 23, 2000) ("Panel decisions have found that ownership of numerous

domain names which are the names or marks of well known business entities suggests

an intent to profit from the activities of others.") (citing cases).

Secondly, the fact that Complainant’s TICKETMASTER trademark was federally

registered in the United States (where Respondents are located) as of the date

that the Domain Names were registered put Respondents on at least constructive

notice of Complainant’s trademark rights (and given the fame of the mark, it

is hard to believe that they did not also have actual knowledge of it). "Actual

or constructive knowledge of the Complainant’s rights in trademarks is a factor

supporting bad faith." Ticketmaster Corp. v. Spider Web Design, Inc.,

D2000-1551 (WIPO, Feb. 4, 2001).

Finally, the fact that Respondents have registered the .net and .org Domain

Names without making any apparent use of them (Footnote

2) can, in an appropriate context, constitute further evidence of bad faith.

See id.; see also Telstra Corp. v. Nuclear Marshmallows,

D2000-0003 (WIPO, Feb. 18, 2000) (registration

together with "inaction" can constitute bad faith). Numerous panels

have followed this decision. See Ticketmaster (citing eight such

cases). While this Panel is not prepared to conclude that nonuse of a domain

name will automatically constitute bad faith, it is, on the facts of this case,

a factor adding to the weight of the evidence of bad faith with respect to these

domain names, particularly where Respondents have not come forward with any

response to the allegations against them and where their bad faith has already

been established as to other domain names, including one identical, but for

its TLD, to the .org and .net Domain Names at issue here.

6. Decision

In light of the above findings and analysis, the Panel decides that Ticketmaster

has met its burden of proving that: (1) the Domain Names are identical or confusingly

similar to marks belonging to the Complainant; (2) Respondents have no rights

or legitimate interest in the Domain Names; and (3) the Domain Names have been

registered and are being used by Respondents in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel

requires that registration of the <urn2ticketmaster.com>, <urn2ticketmaster.net>,

<urn2ticketmaster.org> domain names be transferred to Ticketmaster.

Michael Albert

Sole Panelist

Dated: July 18, 2001

Footnotes:

1. The fourth illustration, use of a domain name to attract Internet users,

for commercial gain, to a web site by creating a likelihood of confusion with

the Complainant’s trademark, might arguably apply as well (under an "initial

interest confusion" analysis), but the Panel need not reach Policy paragraph 4(b)(iv)

in light of its resolution of this matter under paragraph 4(b)(i). (back

to text)

2. It is, of course, possible to make use of a domain name without having a

web site located at that address. For example, a domain name can be used for

e-mail, FTP, and other such purposes without the need to create and host a publicly-accessible

web site. The record therefore does not conclusively establish nonuse. But here,

there is no evidence or reason to believe that the .net or .org Domain Names

are being used for any purpose, and Respondents have not contended that they

are. (back to text)

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