HBP, Inc. v. Front and Center Tickets, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HBP, Inc. v. Front and Center Tickets, Inc.

Case No. D2002-0802

1. The Parties

The Complainant is HBP, Inc. of Reno, Nevada, United States of America, represented

by Enns & Archer LLP, of United States of America.

The Respondent is Front and Center Tickets, Inc. of Fort Lauderdale, Florida,

United States of America.

2. The Domain Names and Registrar

The disputed domain names <daytona500tickets.net> and <daytona500tickets.org>

are registered with Dotster Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on August 26, 2002, by email. On August 27, 2002, the Center

transmitted by email to Dotster Inc., a request for registrar verification in

connection with the domain names at issue. On September 11, 2002,

Dotster Inc., transmitted by email to the Center its verification response confirming

that the Respondent is listed as the registrant and providing the contact details

for the administrative, billing, and technical contact. The Center verified

that the Complaint satisfied the formal requirements of the Uniform Domain Name

Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain

Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2002.

In accordance with the Rules, paragraph 5(a), the due date for Response was

October 2, 2002. At Respondent's request, and following exchange of

email correspondence between the Center and the parties, Respondent was granted

an extension to file its Response until October 9, 2002. The Response

was filed with the Center on October 9, 2002.

The Center appointed Frederick M. Abbott, David W. Plant and Neil A. Smith

as panelists in this matter on November 8, 2002. The Panel finds that

it was properly constituted. Each member of the Panel has submitted the Statement

of Acceptance and Declaration of Impartiality and Independence, as required

by the Center to ensure compliance with the Rules, paragraph 7.

On November 28, 2002, the Center transmitted Administrative Panel Procedural

Order No. 1 ("Panel Order No. 1) of the Panel to the parties. Panel Order

No.1 stated:

"1. In Paragraph 9 and elsewhere in the Complaint, the Complainant, HBP,

Inc., indicates that it is exclusive licensee of the DAYTONA 500 mark from International

Speedway Corporation. The Panel requests that Complainant provide evidence sufficient

to demonstrate its status as exclusive licensee, its authority to initiate this

proceeding on behalf of the licensor, and its right to act as transferee of

the disputed domain names, should the Panel conclude that its request for an

order of transfer be granted.

"2. In Paragraph 11(b)(iv) of the Complaint, the Complainant asserts that

Respondent's resale of Daytona 500 tickets at a price above that printed on

the tickets constitutes a violation of Florida law. The Panel asks that Complainant

address the question whether the Florida statute cited by it makes it illegal

to sell event tickets outside that state, on the Internet, for events taking

place within that state. "

Panel Order No. 1 established due dates for Complainant's responsive submission

and Respondent's counter-submission, which due dates were met by the parties.

On December 12, 2002, Complainant further submitted a certification

responsive to Respondent's suggestion that its failure to initially certify

its supplemental response constituted a material defect in its pleading, without

admitting that the initial submission was in any way defective.

Following receipt of the responses to Panel Order No. 1, the Center notified

the parties that the Panel extended the due date for its decision to January 1, 2003.

The Panel thereafter extended the due date for its decision to January 31, 2003,

and the Center notified the parties accordingly.

4. Factual Background

Complainant, HBP, Inc., is exclusive licensee in the United States of International

Speedway Inc. ("ISI") (a Delaware corporation) for the "DAYTONA

500" mark (see discussion infra regarding ISI's rights in

the mark). ISI has authorized HBP, Inc. to initiate this proceeding to protect

ISI's interests in its mark, and has authorized HBP, Inc. to act as transferee

of the disputed domain names in the event the Panel orders such transfer in

this proceeding. (Complaint, paragraph 9, and Complainant's Response to Panel

Order No. 1, paragraph I & attached letter dated December 3, 2002,

from Janice C. George, Secretary, ISI, to the Panel). The Panel notes

that Complainant referred to International Speedway Corporation ("ISC")

(a Florida corporation) in its Complaint as holder and licensor of the mark,

and amended this reference to ISI in its Response to Panel Order No. 1. United

States Patent and Trademark Office ("USPTO") registration data shows

ISI as assignee of the mark from ISC.)

ISI, as assignee of ISC, is the holder of registrations for the trademark and

service mark "DAYTONA 500" on the Principal Register at the USPTO,

Reg. No. 964,900, dated July 24, 1973, in International Class (IC)

41, service mark covering "Entertainment Service - Namely, an annual automobile

race, the entertainment being rendered through the medium of radio and television",

and Reg. No. 1,827,197, dated March 22, 1994, in IC's 6, 21, 25, 28

and 34, trademark covering various goods, such as novelty license plates and

clothing. (Complaint, paragraph 9 & Annex C & G). Complainant indicates

that it is holder of registrations for other "DAYTONA"-formative marks

(such as "DAYTONA INTERNATIONAL SPEEDWAY"), but has not provided details

regarding such registrations (id., paragraph 9).

The "DAYTONA 500" mark is used to identify an automobile race organized

by Complainant and its affiliated enterprises. In 2000, CBS Sports paid approximately

$18,000,000 for the right to televise the 2000 Daytona 500 race. The Daytona

500 race is among the most widely viewed automobile races in the United States,

and the race has been widely broadcast outside the United States. In 2002, over

35,000,000 television viewers in the United States watched all or part of the

race broadcast, which was also broadcast by more than 690 radio stations. The

"DAYTONA 500" mark is well known among consumers of automobile racing

entertainment in the United States. (Id., paragraph 9 & Annexes D-F).

Complainant and its affiliated enterprises enter into "official sponsorship"

agreements with various companies, such as Ford, Unocal, Pepsi, Frito-Lay, Visa,

Rolex, AT&T, UPS and Valvoline, authorizing these "official sponsors"

to use the "DAYTONA 500" mark (among others) in connection with the

advertisement of their products and services (id., paragraph 9).

According to the registrar's verification to the Center, Respondent is registrant

of the disputed domain names <daytona500tickets.net> and <daytona500tickets.org>.

The registrations for both names were created on July 14, 2001, and

were last updated on that same date. The Technical Contact for the disputed

domain names is "Halpern, Mark".

As of August 15, 2002, the disputed domain name <daytona500tickets.net>

was used to post a home page headed with the term in large font "daytona500tickets.net",

with the words "best prices - best selection - best service" appearing

in smaller font beneath that heading. To the side of the large heading was a

logo for "FRONTROW NETWORK", with a toll-free telephone number. Beneath

these headings was the statement "PREMIUM TICKETS FOR ALL MAJOR EVENTS".

Beneath that followed a chart showing various types of events with names of

artists, teams and/or locations. Among the chart headings was "AUTO RACING",

followed by a list:

"NASCAR

Daytona 500

Tickets

Kansas City,

Bristol,

Talladega, Louden,

Grand Prix

Indy 500."

This home page also allowed searching by "event" and "venue".

It included no disclaimer of affiliation with any enterprise. (Complaint, Annex

J).

As of August 21, 2002, clicking on "NASCAR" on a list on the left

side of the home page took the user to another web page also headed with "daytonat500tickets.net"

(as above), and the statements "*BUY NASCAR TICKETS ONLINE* OR call - now

toll free …" and a list of "UPCOMING NASCAR RACES, RACING SPECIALS".

As of August 15, 2002, "DAYTONA 500" did not appear on that

list, which included, for example, "Pepsi 400 tickets" and "Pennzoil

400 tickets". By clicking on "Pennzoil 400 tickets", the user

was taken to a listing of tickets for "NASCAR at DAYTONA SPEEDWAY",

with over 200 tickets offered for sale for the Daytona 500 race at prices ranging

from $170 to $737 each. (Complaint, Annex J). The "face value" of

a $737 ticket is $215 (id., paragraph 9).

As of August 15, 2002, the disputed domain name <daytona500tickets.org>

was used to host a home page headed "Daytona 500 Tickets", with a

toll free telephone number. The home page showed illustrated advertisements

for "Indy 500 tickets", "Daytona 500", "Formula

1 Grand Prix", and "Brickyard 400". Clicking through on "Daytona

500" included both reference to tickets, and a statement "Thinking

of extending your Florida holiday let us know and we can customise your package

and dates to your needs". At the bottom of this click through page in small

font appears "DISCLAMER*NASCAR has neither licensed nor endorsed Front

and Center Entertainment Group to sell goods and services in conjunction with

NASCAR races.*"

On March 12, 2000, Mark Halpern sent an email to Complainant indicating that

he had "inadvertently obtained the domain name <dayonta500.net> and

<.org>" and offering to transfer them to Complainant for free to

"do the right thing". When Complainant responded affirmatively by

letter of March 21, 2000, Respondent replied with a letter claiming

that his ownership and use of the subject names was "fair use" and

refusing to transfer them (but offering to insert a disclaimer on his website).

Following demands from Complainant, Respondent eventually transferred the names

to it. (Complaint, paragraph 10 & Annex H, and Response).

On April 17, 2002, Complainant sent a cease and desist and transfer demand

regarding the disputed domain names to Respondent’s former counsel. No response

was received from that counsel or Respondent. (Id., paragraph 10 &

Annex I).

As evidenced by cancelled check dated March 31, 2000, Respondent

purchased 50 seats from Daytona International Speedway for $4,259 (Respondent's

check identifier "Daytona T738293 2/18/2001 (50) seats"). Respondent's

owner states that it has maintained for eight years a contractual relationship

to purchase a minimum 50 seats per year from Complainant, but did not submit

written evidence of this contract other than the aforesaid cancelled check.

Respondent further states that Complainant was aware of Respondent and the nature

of its business (Respondent's Response to Panel Order No. 1, Affidavit of Mark

Halpern, paragraph 3, sworn/undated & Exhibit B (cancelled check)).

Respondent indicates that it has been registered, licensed and bonded within

the State of Florida as a travel agency since 1990. (Affidavit of Halpern, id.).

The Registration Agreement in effect between Respondent and Dotster, Inc. subjects

Respondent to dispute settlement under the Policy. The Policy requires that

domain name registrants submit to a mandatory Administrative Proceeding conducted

by an approved dispute resolution service provider, of which WIPO is one, regarding

allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties' Contentions

A. Complainant

Complainant alleges that it is exclusive licensee of the "DAYTONA 500"

trademark and service mark in the United States with authority to initiate this

proceeding on behalf of the licensor, and to act as transferee of the disputed

domain names should that be ordered by the Panel (see Factual Background,

supra).

Complainant argues that the disputed domain names are identical or confusingly

similar to its mark. It states that addition of a generic or descriptive term

to the mark does not avoid likelihood of confusion.

Complainant indicates that the "DAYTONA 500" mark is well known in

the United States.

Complainant argues that Respondent has no rights or legitimate interests in

the disputed domain names. It alleges that Respondent has never been authorized

to use its mark, or to sell tickets to the Daytona 500 race. Complainant indicates

that Respondent is not commonly known as "DAYTONA 500". Complainant

argues that even if Respondent may at times sell "DAYONA 500" tickets,

this does not give Respondent rights to use the mark in its domain names. Complainant

alleges that Respondent's sale of DAYTONA 500 tickets at "grossly inflated

prices further negates any purported fair use", and that "Such a practice

violates the policies of D[aytona] I[nternational]S[peedway], Complainant's

sublicensee, and Florida law. On the back of every ticket to the DAYTONA 500

race is printed, 'Tickets may not be sold at a price higher than printed on

the ticket’."

Complainant states:

"Florida statutes provide 'Whoever shall offer for sale or sell any ticket

good for admission to any sporting exhibition, athletic contest, theater, or

any exhibition where an admission price is charged and request or receive a

price in excess of $1 above the retail admission price charged therefore by

the original seller of said ticket shall be guilty of a misdemeanor of the second

degree.' Fla. Stat. ch. 817.36(2)(a) (2000). Complainant and DIS have an interest

in making sure that the DAYTONA 500 mark is not associated with conduct in violation

of state statutes. By inflating the prices of the tickets sold to the DAYTONA

500 race, Respondent tarnishes the goodwill associated with Complainant, DIS

and the DAYTONA 500 mark. Therefore, Respondent has no legitimate interest or

right to use the DAYTONA 500 mark in this way."

Complainant argues that Respondent is using its mark to misleading divert consumers

for commercial gain and has no legitimate rights in its mark.

Complainant states that Respondent registered and is using the disputed domain

names in bad faith. Complainant alleges that Respondent was aware of its mark

when it registered the names, and that in any case registration of the marks

establishes constructive notice. Complainant alleges that Respondent registered

and used the names to intentionally attempt to attract for commercial gain Internet

users to its website by creating a likelihood of confusion regarding sponsorship,

affiliation or endorsement by Complainant of Respondent's websites. Complainant

indicates that Respondent has used its mark " to lure users to Respondent's

websites, where it then has the opportunity to sell tickets to other sports

and entertainment events, including tickets to other NASCAR sanctioned races

conducted by promoters other than Complainant and its licensees, and who are

in competition with Complainant. This 'bait and switch' scheme clearly shows

bad faith use of the DAYTONA 500 mark in the domain names."

Complainant alleges that Respondent's use of a small disclaimer at the bottom

of one web page does not negate bad faith registration and use.

Complainant indicated in response to Panel Order No. 1 that Florida's criminal

jurisdiction statute would bring Respondent's activities regarding sales to

parties outside the state within the scope of the "scalping statute"

because of the connections (e.g., taking orders in Florida, the event taking

place in Florida, shipping of tickets from Florida). It further argues that

a finding of illegality under Florida's scalping statute is not necessary to

finding lack of fair use of the disputed domain names.

Complainant requests the Panel to direct the registrar to transfer the disputed

domain names to it.

B. Respondent

Respondent alleges that Complainant does not have rights in the trademark and

service mark "DAYTONA 500 TICKETS", which is much different than "DAYTONA

500". Respondent says: "If the panel were to make this determination,

then, for example, the registrant of the syllable 'micro' would have a precedent

for obtaining the domain name <microsoft.com>, <microsoft-word.com>

and many other variations thereof. A decision of this type would create an extremely

unfortunate precedent."

Respondent argues in response to Complainant's allegation that it is not authorized

to use its mark, that it is common for brokers to use marks or event names along

with "tickets" in domain names.

Respondent contends that principles of exhaustion of rights establish its fair

use of Complainant's marks in the disputed domain names. It refers to language

in Koninklijke Philips Electronics N.V. v. Cun Siang Wang, WIPO

Case No. D2000-1778 (March 15, 2001) and Chantelle v. Marvin

Weinberger, WIPO Case No. D2001-1181

(December 20, 2001), in support of its proposition.

Respondent further argues that its use of Complainant's marks in connection

with the resale of tickets constitutes "fair use", citing to NCAA

v. Randy Pitkin, et al., WIPO Case No.

D2000-0903 (March 9, 2001) and Adaptive Molecular Technologies,

Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines &

More, WIPO Case No. D2000-0006

(February 28, 2000), in support.

Respondent contends that its use of "DAYONA 500" in the disputed

domain names to advertise tickets for the Daytona 500 race is a fair use because

it is using the domain names to identify the tickets in question and because

Respondent has used a disclaimer.

Respondent argues that it has not registered or used the disputed domain names

in bad faith because there is no likelihood of confusion regarding Complainant's

sponsorship of its websites since it is "abundantly clear that many types

of tickets for many types of events are being marketed. Furthermore, there is

a disclaimer on the page which irrefutably proclaims that the website is not

affiliated or endorsed by Complainant." Respondent argues that any confusion

would be "low level" and would be dispelled by its disclaimer. Respondent

argues that it is acting in good faith by selling legitimate products of Complainant.

Respondent argues that its offer and eventual transfer of <daytona500.net>

and <daytona500.org> to Complainant evidence its good faith.

In response to Panel Order No. 1, Respondent argues that a determination whether

its actions are consistent with Florida criminal statutes is outside the scope

of the Panel's authority. It argues that should the Panel elect to consider

the legality of Respondent's conduct, it should be aware that the Florida scalping

law includes a number of exceptions, such as relating to travel agencies reselling

tickets as part of a travel package. Respondent argues that the Panel could

not fairly make a determination on the question of lawfulness with the limited

evidence before it, and should refrain from doing so.

Respondent requests that the Panel reject Complainant's request to order the

transfer of the disputed domain names to it.

6. Discussion and Findings

The Panel determination in this matter is rendered by Frederick Abbott (Presiding)

and David Plant, constituting a majority. Panelist Neil Smith dissents

from the majority decision. Reference to the Panel herein should be understood

to refer to the Panel majority.

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy and Rules

establish procedures intended to ensure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., paragraph 2(a), Rules). In this proceeding, Respondent

filed detailed responsive pleadings. The Panel is satisfied that Respondent

had adequate notice and opportunity to participate.

As a preliminary matter, the Panel notes that each party submitted a response

to its Panel Order No. 1. Respondent objected to Complainant's submission on

grounds that Complainant had not included a certification of the accuracy of

the information in its supplemental submission. The Panel notes that the only

certification the Rules require of a Complainant is in respect to its Complaint

(Rules, paragraph 3(b)(xiv)), and that the Panel did not request or require

a certification in regard to supplemental submissions). Following Respondent's

objection, Complainant transmitted a certification by counsel to assure compliance

with unspecified requirements. The Panel does not consider it necessary to consider

such additional certification as it was not required by the Policy, Rules or

Supplemental Rules.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration and use, and to obtain relief. These elements are that:

(i) respondent's domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) respondent's domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

A. Identical or Confusingly Similar

ISI is the holder of trademark and service mark registrations for the term

"DAYTONA 500" on the Principal Register at the USPTO. Such registrations

establish a presumption of exclusive rights in the mark in favor of the registrant,

and Respondent has not provided evidence to rebut that presumption. Complainant

has presented evidence sufficient to establish that it is the exclusive licensee

of ISI in the United States for the "DAYTONA 500" mark, and that it

has been authorized by ISI to initiate and prosecute this Administrative Proceeding,

and to act as transferee of the disputed domain names should the Panel so order.

The Panel notes that the licensor and licensee of the mark are parts of a commonly

controlled enterprise. The Panel determines that Complainant has rights in the

trademark and service mark "DAYTONA 500". For purposes of this determination,

the Panel will hereinafter refer solely to Complainant as holder of rights in

the mark.

The Panel further determines on the basis of extensive evidence presented by

Complainant regarding consumer identification of the "DAYTONA 500"

mark with its racing entertainment service (the Daytona 500 race), that the

mark is well known in the field of automobile racing.

The disputed domain names <daytona500tickets.net> and <daytona500tickets.org>

directly incorporate Complainant's mark, and add the term "tickets"

and a gTLD (".net" and ".org" respectively). The common

noun "tickets" does not distinguish the disputed domain names from

Complainant's mark such as to avoid a finding of confusing similarity. Internet

users viewing Complainant's mark along with the common noun "tickets"

would likely assume that Complainant was using its mark (or had authorized another

party to use its mark) to offer tickets for sale on the Internet. The addition

of the gTLD ".net" and ".org", respectively, in this case

does not act to dispel potential Internet user confusion.

Respondent's asserts that a finding by the Panel of confusing similarity would

acknowledge that the holder of rights in a mark "micro" would be able

to "obtain" (presumably meaning in an Administrative Proceeding) the

domain name <microsoft.com>. This is not correct. Complainant is not asserting

exclusive rights in the word "tickets".[1]

Complainant is not attempting to "obtain" the disputed domain names

by asserting exclusive rights to the names (including "tickets") as

trademarks. It is instead attempting to prevent Respondent from using its "DAYTONA

500" mark along with a common word in a manner that is likely to confuse

Internet users. The holder of rights in a mark "micro", were this

common term to acquire secondary meaning as a mark, might or might not be able

to establish that the term "Microsoft" was confusingly similar to

its mark in a particular context. This would not, however, allow it to "obtain"

the domain name <microsoft.com> from the holder of the "MICROSOFT"

mark in an Administrative Proceeding under the Policy because its holder, Microsoft

Corporation, has rights or legitimate interests in that term as a mark.

The Panel determines that Complainant has rights in the trademark and service

mark "DAYTONA 500" and that the disputed domain names are confusingly

similar to its mark. Complainant has established the first element necessary

for a finding of abusive domain name registration and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is

that the Respondent has no rights or legitimate interests in respect of the

domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several

ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, paragraph 4(c))."

Respondent does not assert that it has been commonly known by the disputed

domain names. Respondent argues that it has used the disputed domain names for

a bona fide offering of goods. Whether or not its resale of Daytona 500

tickets is a bona fide offering of goods, Respondent had notice of a

dispute with Complainant prior to using or preparing to use the disputed domain

names to offer those tickets for sale. In 2000, Complainant had vigorously objected

to Respondent's registration of the domain names <daytona500.net> and

<daytona500.org>, and Respondent eventually transferred those domain names

to Complainant upon the latter's legal demand. Respondent could not in good

faith have concluded that Complainant would not dispute its registration and

use of <daytona500tickets.net> and <daytona500tickets.org> in 2001.

Respondent's counsel already argued to Complainant in 2000 that the earlier-registered

domain names were held for "fair use" purposes, and Complainant had

disputed this in 2000. Respondent did not offer "Daytona 500" tickets

for sale under the disputed domain names prior to notice of a dispute with Complainant.

Respondent's principal argument is that use of the disputed domain names (and

Complainant's mark) for the resale of Daytona 500 race tickets is protected

as "fair use", done without intent for commercial gain to misleadingly

divert consumers. Respondent argues that its use of the "DAYTONA 500"

mark is fair because it is using the mark to identify tickets to a racing event

that is appropriately identified by the mark, that the tickets it is offering

to sell are legitimate goods which it has the right to sell, and that it is

offering to sell the tickets in a manner which makes clear it is not affiliated

with or sponsored by Complainant because it has included a disclaimer of affiliation

with Complainant on its websites.

The Panel notes that determinations regarding claims of fair use depend upon

the facts and circumstances of each case. The facts in this Administrative Proceeding

do not establish fair use of Complainant's mark by Respondent.

Respondent has used the domain name <daytona500tickets.net> to direct

Internet users to a home page headed with the term "daytona500tickets.net"

in large font, with the words "best prices - best selection - best service"

appearing in smaller font beneath that heading. The overall appearance of the

home page is that "DAYTONA 500" is the principal identifier. On the

same web page there are ticket listings for numerous entertainment events, including

many auto racing entertainment events that compete with Complainant's Daytona

500 race. There was no disclaimer of affiliation with Complainant on this web

page, nor did there appear to be a disclaimer elsewhere on this site.

Respondent has used the domain name <daytona500tickets.org> to direct

Internet users to a home page headed "Daytona 500 Tickets", with a

toll free telephone number. The home page showed illustrated advertisements

for "Indy 500 tickets", "Daytona 500", "Formula 1 Grand

Prix", and "Brickyard 400". Once again, the overall appearance

of the home page is that "DAYTONA 500" is the principal identifier,

and a variety of auto racing events that compete with Complainant's are shown

as prominently as that identified by Complainant's mark. Only by clicking through

on "Daytona 500" is an Internet user taken to a web page on which

a small font disclaimer is included at the bottom of the page. That disclaimer

does not refer to Complainant or its mark, but rather to "NASCAR",

which is a mark held by a third party.

The fact that Respondent has purchased Daytona 500 tickets from Complainant

does not establish a fair use right to use Complainant's mark to advertise competing

products in the circumstances presented here.

Whether use of a third party trademark is "fair" involves a contextual

analysis. The U.S. Court of Appeals for the Ninth Circuit in Playboy Enters.

v. Welles, 279 F.3d 796 (9th Cir. 2002), recently re-articulated

a test for nominative fair use which it first adopted in New Kids on the

Block v. New America Publ'g, Inc., 971 F.2d 302 (9th Cir. 1992):

"First, the product or service in question must be one not readily identifiable

without use of the trademark; second, only so much of the mark or marks may

be used as is reasonably necessary to identify the product or service; and third,

the user must do nothing that would, in conjunction with the mark, suggest sponsorship

or endorsement by the trademark holder. [(n12 New Kids, 971 F.2d at 308

(footnote omitted).]

"We noted in New Kids that a nominative use may also be a commercial one.

n13 [Id. at 309 ('Where, as here, the use does not imply sponsorship or endorsement,

the fact that it is carried on for profit and in competition with the trademark

holder's business is beside the point.')." 279 F. 3d at 801

With reference to the test articulated by the Ninth Circuit, the Panel considers

that Daytona 500 race tickets are not readily identifiable without use of the

"DAYTONA 500" mark. Moreover, Respondent has not used more of the

mark than is necessary to identify the product (i.e., the race tickets).

Respondent's use of Complainant's mark as the principal identifier on its home

pages, and the use of those home pages to advertise the services of competing

race entertainment providers does not, however, survive the test of "do[ing]

nothing that would, in conjunction with the mark, suggest sponsorship or endorsement

by the trademark holder". In the Panel's view, Respondent has deliberately

used Complainant's mark to suggest an association of its business with that

of Complainant.

The Panel notes that the Ninth Circuit's analysis of fair use in Playboy

v. Welles, while acknowledging the right to make limited use of a mark in

a "metatag", did not address the use of the mark in a domain name.

The Ninth Circuit indicated that use of the mark in a manner that would cause

search engines to list the fair use claimant's website prior to that of the

trademark holder might alter its analysis. [2]

Use in a domain name may create a more complex situation for a party claiming

fair use. The Panel need not in this proceeding distinguish fair use of a mark

in a domain name and on a website. Respondent used the disputed domain names

(and mark) to direct Internet users to websites which in fact imply sponsorship

by or affiliation with the mark holder. This is sufficient to negate Respondent's

claim of fair use as to the disputed domain names.

The Panel also takes note of the recent decision of the U.S. Court of Appeals

for the Seventh Circuit in Ty Inc. v. Perryman, No. 02-1771, decided

October 4, 2002. This case involving a dilution claim regarding use

of the <bargainbeanies.com> domain name in connection with a website offering

"Beanie Babies" for resale. The Seventh Circuit (Posner, CJ), found

that the defendant-appellant did not blur or tarnish the trademark holder's

"Beanie Babies" mark by truthfully advertising its products for resale

on the Internet, stating, inter alia, "We do not think that by virtue

of trademark law producers own their aftermarkets and can impede sellers in

the aftermarket from marketing the trademarked products." (No. 02-1771,

at 7).

The telling point in Ty Inc. for the present proceeding involves the

Seventh Circuit's "com[ing] back to the skipped issue of confusion."

The Court continued "For although 80 percent of Perryman's sales are of

Ty's products, this means that 20 percent are not, and on her Web page after

listing the various Ty products under such names as 'Beanie Babies' she has

the caption "Other Beanies" … that are not manufactured by Ty. This

is plain misdescription, in fact false advertising, and supports the last prohibition

against using 'Beanie' or 'Beanies' 'in connection with any non-Ty products"

(id., at 10-11).

In the present case, Respondent is using Complainant's "DAYTONA 500"

mark to advertise tickets of competing race enterprises for sale. The term "DAYTONA

500" prominently appears over the offers for sale of competing products.

The disclaimer on one site is non-existent, and on the other so remote as to

be effectively non-existent. This is misdescription. Respondent is using Complainant's

mark to advertise competing products, with no express or implied authority to

do so (compare, e.g., Milwaukee Electric Tool Corporation v. Bay Verte

Machinery, Inc. d/b/a The Power Tool Store, WIPO

Case No. D2002-0774 (October 26, 2002), Panelist Abbott as sole

panelist, [allowing authorized distributor's use of mark in connection with

advertising multiple products when implicitly permitted as mark holder's standard

business practice]).

The Panel has considered Respondent's reference to NCAA v. Randy

Pitkin, et al., WIPO Case No. D2000-0903

(March 9, 2001) (Panelist Smith in majority). In that case the disputed

domain names were used to direct Internet users to websites which only offered

for sale tickets to events sponsored by the trademark holder. That sufficiently

distinguishes the holding in NCAA v. Pitkin so as to be inapposite to

the present case. The Panel notes that there are Administrative Panel decisions

that do not endorse the approach adopted in NCAA v. Pitkin (National Collegiate

Athletic Association and March Madness Athletic Association, L.L.C. v. Mark

Halpern and Front & Center Entertainment, WIPO

Case No. D2000-0700 (December 10, 2000), Panelist Plant as sole

panelist). "Ticket resale" cases are fact-sensitive and not readily

subject to a general rule of decision.

The Panel takes note of Complainant's allegation that Respondent is acting

contrary to Florida criminal law by reselling tickets at prices substantially

in excess of face value. The Panel also takes note of Respondent's rejection

of that allegation based, inter alia, on its status as a travel agent.

The Panel accepts Respondent's view that the question whether Respondent is

acting consistently with a state criminal statute is not appropriately addressed

by the Panel after Respondent has challenged its applicability. While there

may be other cases and circumstances in which a manifest prima facie

violation of criminal law could be considered relevant to a determination by

a Panel regarding fair use, a proceeding before an Administrative Panel under

the Policy is not the appropriate forum for adjudicating contested allegations

of this kind.

The Panel finds that Complainant has established that Respondent has no rights

or legitimate interests in the disputed domain names. Complainant has established

the second element necessary for a finding of abusive domain name registration

and use.

C. Registered and Used in Bad Faith

Respondent's registration and use of <daytona500tickets.net> and <daytona500tickets.org>

to direct Internet users to websites that prominently display Complainant's

mark as the identifier for competing products evidences bad faith registration

and use of the disputed domain names for commercial gain, by creating confusion

among Internet users as to Complainant's sponsorship of or affiliation with

Respondent's websites. Such registration and use is in bad faith within the

meaning of paragraph 4(b)(iv) of the Policy.

Respondent was on notice from prior dealings that Complainant would and did

object to its use of the domain names in the manner in which it used them. Had

Respondent been attempting to act in good faith within the scope of the Policy,

it would not have used Complainant's marks as the prominent headings of its

web pages. Respondent did not use a disclaimer on one of its websites, and on

the second used a small general disclaimer on an internal web page unlikely

to be noticed by Internet users, at least until well into their examination

of Respondent's website. The Panel considers that Respondent understood the

legal consequences of its actions.

The Panel finds that Respondent registered and used the disputed domain names

in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Complainant

has established the third element necessary to a finding of abusive domain name

registration and use.

The Panel will therefore direct the registrar to transfer the disputed domain

names to Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain names <daytona500tickets.net>

and <daytona500tickets.org> be transferred to the Complainant.

Frederick M. Abbott

Presiding Panelist

David Plant

Panelist

Dated: February 11, 2003

Dissent

I must respectfully dissent from the conclusion of the majority that Respondent

is a cybersquatter within the meaning of the Policy which govern this proceeding.

I wish also to write separately regarding the determination which we make here

that Complainant has rights as a licensee of the owner of the trademark "DAYTONA

500", to bring this proceeding under the Policy seeking divestiture and

reassignment of the Internet domain name equivalent to and confusingly similar

to the trademark. While I do not dissent as to the latter conclusion of the

majority, and join in it here, I wish to make further remarks as to this scenario.

Proceedings In Which the Complainant Is a Licensee of the Trademark Owner

This case has evolved into a somewhat familiar pattern. While the Policy and

Rules governing these administrative proceedings were drafted with the expectation

that the Complainant would be the trademark owner that was protesting the ownership

of a similar domain name by the Respondent, and seeking to cancel the domain

name registration or, as is the case in most proceedings, seek transfer to Complainant

of the domain name, we have here a recurring pattern where the Complainant is

not the trademark owner, but is merely an exclusive licensee of the trademark.

The license agreement between the trademark owner, here International Speedway

Corporation, and the exclusive licensee, HBP, Inc., the Complainant here, is

apparently silent as to ownership of the domain name, but the parties have apparently

agreed that between the two of them, licensee and licensor, the Internet domain

name may be held by the licensee. This is perfectly appropriate, and, I am satisfied

by the information and documents supplied to the Panel here by the Complainant

in response to the Panel’s questions, that for purposes of this decision we

may assume that the trademark owner, the owner of the trademark and its licensor,

has agreed to allow its licensee, Complainant, to bring this proceeding, and

to seek transfer of, and to own, the Internet domain name equivalent to the

licensed trademark. For purpose of this proceeding, I am satisfied that licensee,

Complainant, has a basis to bring this proceeding and that licensor will not

disagree with Complainant or object to ownership of the domain name, if Complainant

is successful, by Complainant, the licensee.

My additional remarks suggest, however, that the better practice in this situation

is to follow the ICANN rules and require that the trademark owner either bring

the proceedings as a Complainant or join in the administrative proceeding as

a co-complainant. The Policy and Rules were carefully drafted to include certain

representations, indemnifications for the dispute-resolution service provider

(the "Provider"), in this case the Center, and, in particular, certain

concessions by the Complainant, as to jurisdiction in certain locations where,

should the Panel recommend cancellation or transfer of the domain name, the

losing Respondent can go to a local court seeking, in effect, a review of the

UDRP determination ordering transfer. Where the action is brought by a licensee,

even an exclusive licensee, seeking transfer of the domain name, the Provider,

here the Center, and, particularly, the Respondent, may lose some of the benefits

of the carefully drafted Policy and Rules which provide for the jurisdictional

concession, and other terms agreed to by a Complainant. Since in some jurisdictions,

the trademark owner/licensor may, in effect, be a necessary party, or

be a real party in interest, or equivalent party to a proceeding brought in

a local court to prevent transfer of the Internet domain name, because the licensor

is the owner of the trademark which forms a basis for the order of transfer,

I would prefer that in this scenario, the Panel, or the administering organization

for the dispute resolution procedure, here WIPO, require that the licensor join

in the complaint, and agree to all of the terms and conditions mandated by bringing

such a complaint under the Policy.

While I am satisfied here that the licensor, here International Speedway Corporation,

an owner of the trademarks which form the basis for bringing this proceeding,

has stated that it has no objection to the transfer of the Internet domain name

to its licensee, here Complainant, I would suggest that the better practice

would be to require the licensor to join in the proceedings, so that the jurisdictional

and other trappings of the UDRP proceeding are present. Perhaps at the next

redrafting of the Policy and Rules this can be considered. There are enough

disputes in these proceedings between licensor and licensee, so as to suggest

that not all licensors and licensees readily agree as to that ownership of the

domain name equivalent to the licensed trademark may be in the name of the licensee.

Cybersquatting

I must respectfully dissent from the conclusion of the majority of the Panel

that Respondent here is a cybersquatter under the Policy. I do not believe that

Respondent is a cybersquatter under the Policy.

I find it pertinent that the Internet domain name at issue, while including

the name of the event, here the "Daytona 500" race, includes also

the generic term "tickets," and that Respondent is selling tickets

to the event on the Internet website to which the Internet domain name refers

or is in this case linked. I note that Respondent had originally registered

one or more Internet domain names which comprised the trademark name "DAYTONA

500", alone, as the second level designator, such as <daytona500.com>,

and that after the issue was raised Respondent assigned such Internet domain

name to Complainant. I find that inclusion of the generic word "tickets,"

in a situation where Respondent is selling or offering for sale tickets or tour

packages including tickets to the event named "Daytona 500," which

tickets were purchased in bulk from Complainant, to be sufficient to support

the use by the Respondent of such Internet domain names, and to at least support

the proposition that Respondent is not a cybersquatter within the Policy. I

find persuasive here the apparently admitted fact that for several years, notwithstanding

its current objection to Respondent’s ownership of the Internet domain name

<daytona500tickets.com>, Complainant has been selling, and apparently

continues to sell, bulk quantities of tickets each year to Respondent, without

any conditions or limitations on Respondent’s use of the Internet domain name

including the name of the event in conjunction with this resale of such "tickets."

I thus find it disingenuous for Complainant to argue before this Panel the

Florida scalping law involving the resale of tickets, and to suggest that Respondent

is in violation of such law, and to even brand Respondent as a "criminal"

under such laws governing scalping, when in fact it is not disputed that Complainant

has been selling, and apparently continues to sell, each year, bulk quantities

of tickets to Respondent for the Daytona 500 event, knowing that Respondent

is not filling the bleachers with its friends and families, but is reselling

tickets to the Daytona 500 race to members of the public via the Internet. Having

participated in placing the tickets to the Daytona 500 event in the hands

of Respondent, in this case for payments, Complainant is hardly in a position

to, in my opinion, attack the morals of an illegality of Respondent in reselling

those tickets. This is particularly true where, as here, there may be no scalping

violation in Respondent’s sale of such tickets as part of a tour package. But,

in any event, having sold such tickets to Respondent, Complainant is hardly

in a position to come before this Panel and argue that the tickets, known by

Complainant to be used by Respondent for resale, is, as a result of such resale,

a cybersquatter, or a criminal.

Having apparently been aware of Respondent’s resale of such tickets, and continuing

to sell such event tickets in bulk to Respondent, Complainant can condition

the purchase of such tickets on the non-use, if not the transfer, of the Internet

domain names at issue here. However, I find it troubling that Complainant wants

to apparently make such unconditional sales to Respondent, and yet come before

this Panel and allege that Respondent is a cybersquatter for reselling the tickets

to the public, which Respondent was expected to do, which were sold by Complainant

to Respondent with the knowledge that they would be resold by Respondent.

Regarding the issue at hand, cybersquatting, I do not believe that under the

circumstances, having sold the tickets to Respondent, Complainant can succeed

in proving to this Panel that Respondent is a cybersquatter in using the name

of the event, together with the generic word "tickets", for the resale

of the tickets purchased from Complainant by Respondent on Respondent’s Internet

website. I additionally note for the record that while "DAYTONA 500"

is a registered trademark, it remains "the name of the game" if you

will, in that it is the name of the event. While a trademark allows the trademark

owner to use the trademark, and prevent others from using the trademark for

a defendant’s goods and services, the law does not go so far as to prevent another

from using the name of the event in words which happen to be the same as the

trademark solely to describe the event of the trademark owner, here the Daytona 500

race. To paraphrase the words of the Ninth Circuit Court of Appeals in Cairns

v. Franklin Mint, 292 F.3d 1139 (9th Cir. 2002), in one of several cases

dealing (see also Playboy Enterprises, Inc. v. Terry Welles, 279 F.3d

796 (9th Cir. 2002); and WCVB-TV v. Boston Athletic Association, 926

F.2d 42 (1st Cir. 1991)) with the nominative fair use defense, the trademark

law does not go so far.

As, for example, the United States Court of Appeals for the Ninth Circuit stated,

in referencing another sporting event, which begins with a U.S. city name, the

"Boston Marathon," in the WCVB-TV v. Boston Athletic Association

case, the law goes so far as to require Respondent to use such words as "that

five hundred mile car race held each year in Daytona." While I do not believe

that we have to go so far as to find the use of the name of the sporting event

in a domain name to be nominative fair use, I do not find that the use of the

name of this event in combination with the word "tickets" to be cybersquatting,

where the Respondent is selling tickets to the event bearing the name of the

event which were purchased from the Complainant for resale to the general public.

For the above reasons, I respectfully dissent.

Neil A. Smith

Panelist

Dated: February 11, 2003

1. The USPTO would almost certainly require

any applicant for a mark including the term "tickets" to disclaim exclusive

rights in that word during the application process.

2. The Court said: "We conclude that the

metatags satisfy the second and third elements of the test as well. The metatags

use only so much of the marks as reasonably necessary and nothing is done in

conjunction with them to suggest sponsorship or endorsement by the trademark

holder. We note that our decision might differ if the metatags listed the trademarked

term so repeatedly that Welles' site would regularly appear above PEI's in searches

for one of the trademarked terms." [footnotes omitted] (279 F.3d 796, at 804)