TicketMaster Online-CitySearch, Inc.
v.
Alex Vlasov
[Indexed as: TicketMaster Online-CitySearch v. Alex Vlasov]
[Indexed as: SEATTLESIDEWALK.COM]
National Arbitration Forum
Administrative Panel Decision
Forum File FA0005000094739
Commenced: 10 May 2000
Judgment: 12 June 2000
Presiding Panelist: Honorable Robert T. Pfeuffer
Domain name - Domain name dispute resolution policy - U.S. Trademark - U.S. service mark - Inherently distinctive marks - Identical - Confusingly similar - Legitimate use - Legitimate interest - Bad faith registration - Bad faith use.
Complainant was owner of United States service mark and United States trademark sidewalk and of websites www.seattle.sidewalk.com and www.seattle.sidewalk.citysearch.com. Respondent registered the domain name seattlesidewalk.com.
Held, Name Transferred to Complainant.
The domain name seattlesidewalk.com registered by the Respondent is so close as to be identical or confusingly similar to the Complainants seattle.sidewalk.com and U.S. service mark sidewalk.
Complainant has submitted evidence proving the sidewalk marks have acquired extraordinary distinctiveness and are known throughout the United States as a source for high quality internet services providing information about many U.S.A. destinations. Any person who accesses the website registered by the Respondent makes a direct link to his home page which immediately redirects consumers to Respondents gambling website. Without any evidence to the contrary submitted by the Respondent, it can be inferred that he had no legitimate rights or interests in the domain name but rather intended to extract financial benefits from deliberately misled consumers and/or the Complainant. Respondent deliberately created a likelihood of confusion with the Complainants mark as the source of sponsorship, affiliation or endorsement. This demonstrates both bad faith registration and use.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
Pfeuffer, Panelist: -
The above?entitled matter came on for an administrative hearing on June
8, 2000
before Robert T. Pfeuffer as arbitrator on the Complaint of TICKETMASTER
ONLINE?CITYSEARCH, INC.., hereafter referred to as Complainant and
against ALEX VLASOV, hereinafter referred to as Respondent.
Monika P. Lee
of Heller, Ehrman, White and McAuliffe, L.L.P., of San Francisco, California
represents the Complainant. No representative appears of record
for the
Respondent. Upon the written submitted record, the following
decision is made:
PROCEDURAL FINDINGS
Domain Name: SEATTLESIDEWALK.COM
Domain Name Registrar: Alabanza.com
Domain Name Registrant: Alex Vlasov
Date of Domain Name Registration: December 21, 1999
Date Revised Complaint Filed: May 8, 2000
Date of Commencement of Administrative Proceeding in Accordance with
Rule
2(a)[1] and Rule 4(c): May 10, 2000
Due date for a Response: May 30, 2000
Respondent did not file a response as required by Rule 5(a).
A decision favorable to Complainant was granted June 12, 2000.
After reviewing the Complaint and determining it to be in administrative
compliance, the NATIONAL ARBITRATION FORUM (THE FORUM)
forwarded the Complaint to the Respondent on May 10, 2000 in compliance
with
the Rules and the administrative proceedings were commenced.
The Forum
immediately notified the Registrar ALABANZA.COM and the INTERNET
CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and
the Respondent that the administrative proceedings had commenced.
The
Respondent did not file a response within the time provided by Rule
5(a).
On December 21, 1999, the Respondent registered the domain name
seattlesidewalk.com with ALBANZA.COM, the entity that is the Registrar
of the
domain name. The domain name registrar has also verified that
Respondent is the
Registrant for the domain name seattlesidewalk.com and that by registering
its
domain name with the Registrar, the Respondent agreed to resolve any
dispute
regarding its domain name through ICANNs Rules of Uniform Domain Name
Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution
Policy.
FINDINGS OF FACT
The Respondent having failed to answer herein, the undisputed evidence
establishes
the following:
1. Complainant registered the service mark sidewalk January 27, 1998
under
registration number 2,133,442 with first date of use June 16, 1997
and date of first
use in commerce June 16, 1997.
2. That Complainant further registered the trademark sidewalk September
15,
1998 under registration number 2,189,762 with first date of use April
3, 1997 and
first date of use in commerce April 3, 1997.
3. The above referenced trademarks were approved by the United States
Patent &
Trademark Offices on the registered dates indicated.
4. That the registration was effective from and remains in force from
ten years from
the date of registration as provided by law and is still in full force
and effect on the
date of this decision.
5. Complainant has owned the website www.seattle.sidewalk.com and
www.seattle.sidewalk.citysearch.com which bring up Complainants
website
containing links and information concerning Seattle.
6. That Complainant owns other websites which include the term sidewalk
which
opens Complainants websites for other metropolitan areas in most major
metropolitan areas of the United States.
7. That the sidewalk marks are inherently distinctive for the purposes
Complainant has used said marks. That due to the success and efforts
of
Complainant, the sidewalk marks have acquired extraordinary further
distinctiveness and are known throughout the United States as a source
for high
quality internet services providing information for events, restaurants,
shopping and
other activities in many U.S.A. destinations.
8. Respondent registered the domain name seattlesidewalk.com on December
21, 1999 and in so doing agreed to the provisions of the registration
agreement and
warranted that the registration was not made in bad faith and that
the name does
not conflict with another domain name.
9. Any person who accesses seattlesidwalk.com makes a direct link
to
Respondents home page which immediately redirects consumers to Respondents
gambling website. Persons leaving out the dot between seattle
and sidewalk
will be directed to Respondents website by mistake. Thereafter
the internet user is
shown an offer to accept a Free Casino Game and ultimately will be
transferred
to Respondents Casino On?Net website.
10. The two domain names are confusingly similar and differing only
in a single dot
between the words Seattle and sidewalk and that similarity is grossly
confusing to
the public.
11. That Complainant has had a long standing interest in the name sidewalk
and
the registered service mark sidewalk and filed the domain name
seattle.sidewalk.com long before Respondent filed seattlesidewalk.com
(without
a dot between the words seattle and sidewalk.) Respondents
failure to respond
and offer evidence in respect to the Complaint raises the inference,
which is
unrebutted, that the similarity of names is misleading and that the
Respondent acted
in bad faith and with the intent to extract financial benefits from
mislead consumers
and/or the Complainant when registering the name seattlesidewalk.com.
12. Respondent has made no legitimate use of any version of the name
seattlesidewalk.com nor shown any legitimate interest in any version
of the same.
13. Complainant has used the term sidewalk in its many websites across
the
United States and has used the sidewalk mark continuously since at
least April 3,
1997 and in March 2000 alone the Complainants network had over 275
million
page views, thereby demonstrating its broad use by the general public.
CONCLUSIONS
That the undersigned certifies that he has acted independently and has
no known
conflict of interest to serve as the Arbitrator in this proceeding.
Having been duly
selected, and being wholly impartial, the undersigned makes the following
conclusions upon the findings set out above:
1. That the domain name seattlesidewalk.com registered by the Respondent
is so
close as to be identical or confusingly similar to the Complainants
seattle.sidewalk.com and its service mark sidewalk, to which the
Complainant
has established its legal right and to which the Respondent has failed
to show any
legitimate right or interest.
2. Because of the nationwide use of the term sidewalk as indicated
by the
evidence of broad use by the consuming public, the inference arises
that
Respondent had actual or at least constructive notice of Complainants
prior use of
the mark and name.
3. Because there is no affiliation between Respondent and Complainant,
the
Complainant has no control over the nature and quality of the Respondents
website or services; therefore, the valuable reputation of the sidewalk
service
mark is likely to be diminished, diluted and tarnished by association
with
Respondents gambling website and its uncontrolled use.
4. That the Complainant seeks the remedy provided by paragraph 4(b)(i)
of the
policy for the reasons set out in the Complaint and has requested that
the arbitrator
issue a decision that seattlesidewalk.com be transferred to Complainant.
5. The following is evidence of the Respondents bad faith in registering
the domain
name seattlesidewalk.com:
That contrary to ICANNs Uniform Domain Name Dispute Resolution Policy,
paragraph 4 (b)(iii), Respondent wrongfully registered the domain name
seattlesidewalk.com for the primary purpose of attempting to attract
for
commercial gain, internet users to the Respondents website or other
on?line
location. Respondent thus created a likelihood of confusion
with the
Complainants mark as the source sponsorship, affiliation or endorsement.
6. That the Respondent acted in bad faith by registering the domain
name
seattlesidewalk.com primarily with the intent to extract financial
benefit from
Complainants mislead customers and/or from Complainant when he registered
the
name seattlesidewalk.com.
7. That Respondent acted in bad faith by wrongfully using the domain
name which
included sidewalk for commercial gain by creating a likelihood of
confusion
between the Respondents registered domain name and that of Complainant.
DECISION
Based upon the above findings and conclusions, and pursuant to the rules
for
Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name
Dispute Resolution Policy, it is determined as follows:
HE DULY ASSIGNED ARBITRATOR DIRECTS THAT THE DOMAIN
NAME seattlesidewalk.com, registered by Respondent, ALEX VLASOV,
be
transferred to Complainant TicketMaster Online?CitySearch, Inc.
SIGNED this 12 day of June, 2000.
Honorable Robert T. Pfeuffer
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