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 Complainant’s 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 Respondent’s 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 Complainant’s 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 ICANN’s 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 Complainant’s website
containing links and information concerning Seattle. 

6. That Complainant owns other websites which include the term “sidewalk” which
opens Complainant’s 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
Respondent’s home page which immediately redirects consumers to Respondent’s
gambling website.  Persons leaving out the dot between “seattle” and “sidewalk”
will be directed to Respondent’s website by mistake.  Thereafter the internet user is
shown an offer to accept a “Free Casino Game” and ultimately will be transferred
to Respondent’s “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.)”  Respondent’s 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 Complainant’s 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 Complainant’s
“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 Complainant’s 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 Respondent’s
website or services; therefore, the valuable reputation of the “sidewalk” service
mark is likely to be diminished, diluted and tarnished by association with
Respondent’s 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 Respondent’s bad faith in registering the domain
name “seattlesidewalk.com”:

That contrary to ICANN’s 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 Respondent’s website or other on?line
location.  Respondent thus  created a likelihood of confusion with the
Complainant’s 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
Complainant’s 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 Respondent’s 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