The Complainant is The Royal Edinburgh Military Tattoo Limited of Edinburgh, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Wiggin LLP, United Kingdom.
The Respondents are Tribal Sports, Tribal Sports SL and Domains Manager, Tribal Sports SL, both of Murcia, Spain, represented by Steven Rinehart, United States of America.
The disputed domain name <edinburghtattootickets.com> (the “first disputed domain name”) is registered with Misk.com, Inc. and the disputed domain names <edinburghtattooticket.com> and <edinburghtattootickets.net> (respectively, the “second and third disputed domain names”) are registered with eNom, Inc. (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On November 10, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2016. The Response was filed with the Center on December 15, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 22, 2016. The Panel finds that it was properly constituted. 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.
The Complainant is a company registered in the United Kingdom. It organizes, promotes and sells tickets for the Royal Edinburgh Military Tattoo (the “Tattoo”).
The Tattoo has been held each year since 1948. It is held over three weeks in August each year. The performances have been sold out for each of the last 16 years. Over 220,000 visitors attend the Tattoo each year. It generates some GBP 10 million in box office receipts. In addition, for many years it has been televised. It is broadcast in over 40 countries around the world with an annual viewing audience over 100 million viewers.
The Complainant has a number of registered trademarks. These include:
(a) United Kingdom Trademark No. 2316442, EDINBURGH MILITARY TATTOO, filed on November 21, 2002 and entered in the register on August 27, 2004 for a wide range of goods and services including entertainment related services in International Class 41; and
(b) International Trademark No. 1288624, THE ROYAL EDINBURGH MILITARY TATTOO, registered on August 24, 2015 for a similarly wide range of goods and services and designating, amongst others, the European Union and the United States of America.
The first disputed domain name was registered on April 4, 2010. It resolves to a website which both offers to buy, and also offers for sale, tickets to the Tattoo. Since 2014, the banner on the landing page to which the first disputed domain name resolves includes a notice stating “A Secondary Tattoo Tickets Website (This is not the Official Tattoo Website)”; this notice appears in red lettering, but a smaller type face than the heading “Edinburgh Tattoo Tickets” which are in black lettering apart from the word “Tattoo”, which is in purple.
The second and third disputed domain names were registered on May 5, 2015.
The second disputed domain name resolves to a website which states that “This domain was recently registered at Namecheap. Please check back later!”. It also features a number of “related links”. The first of these is for “Edinburgh Tattoo Package”. Others are for “Theatre Ticket Deals”, “London Rail Theatre Breaks”, “Tickets for Wicked London”, “London Stay”, “Cheap Ticket to London”, “Lion King Theatre Breaks” and other ticket and theatre deals unrelated to the Tattoo. It also includes a note at the foot of the page which states that “The Sponsored Listings displayed above are served automatically by a third party. Neither Parkingcrew nor the domain owner maintain any relationship with the advertisers”.
The third disputed domain name has not resolved to a website.
The First Respondent has registered at least 44 other domain names, which appear to be related to offering sale tickets to other events.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of amongst other things the registered trademarks referred to in section 4 above. Given the length and extent of user of the event’s name, the Panel is also satisfied that the Complainant has common law rights in at least the name The Royal Edinburgh Military Tattoo.
The second stage of this inquiry simply requires a visual or aural comparison of each disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Applying those tests to the disputed domain names, the Panel finds that each is confusingly similar to the Complainant’s proven trademark rights.
The Respondent contends that the Complainant should be found to have no rights in any trademark because its registered trademarks consist of geographic names or plain English words. It is certainly true that the individual words comprising the Complainant’s trademarks are the name of a place, Edinburgh, or ordinary English words. That is also equally true of each of the disputed domain names. It is not accurate to say however that the words in combination could denote any “tattoo” held in Edinburgh.
First, the Respondent’s attack does not pay sufficient regard to the fact that the Complainant’s trademarks are registered trademarks. Generally, it is not the function of a Panel to go behind the validity of a registered trademark.
Secondly, there is no evidence that there are any “tattoos” held in Edinburgh (other than the Complainant’s event) under a name such as Edinburgh Tattoo or Edinburgh Military Tattoo. In addition, as noted above, the Panel considers that the Complainant has demonstrated that it has acquired a secondary meaning in the name of the event. Accordingly, the third-party use of such a name for an event other than the Complainant’s event would be likely to misrepresent to the public that the event in question was the Complainant’s event.
Thirdly, the Respondent’s attack is inconsistent with its own use of the first disputed domain name and defence of that use: that the Respondent uses the first disputed domain name for a website which buys and sells tickets only for the Complainant’s event.
None of the disputed domain names includes the word “military” which is part of both registered trademarks and the event’s official name. However, the Complainant’s trademarks can plainly be recognized in each disputed domain name and the Panel has no hesitation in concluding that users of the Internet are likely to recognize that “Edinburgh Tattoo” is intended to refer to the Complainant’s event.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 2.0, paragraph 2.1.
The Complainant states that it has not authorised the Respondent to use any of the disputed domain names. Nor is the Respondent affiliated with it. The disputed domain names are plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
These facts are typically sufficient to establish the required prima facie case that the Respondent does not have any rights or a legitimate interest in the disputed domain names. It is necessary, however, to consider each disputed domain name on its own merits.
As noted above, the first disputed domain name resolves to a website which offers for sale tickets to the Complainant’s event and also offers to buy those tickets from holders of such tickets. Since 2014, the website has also included a disclaimer at the top of the webpage in the form described in section 4 above.
The Complainant contends that these circumstances are insufficient to qualify as showing a right or legitimate interest under the Policy in part because it contends that the disclaimer described above is insufficiently clear and prominent, relying on Fédération Française De tennis (FFT) v. Ticketfinders International LLC/Michael Cook, WIPO Case No. D2013-2024. The Complainant also points out that the disclaimer was added only in 2014. Finally, the Complainant argues that the registration of the three disputed domain names shows that the Respondent is trying to “corner the market” in domain names that reflect the Complainant’s trademarks.
In support of its contentions, the Complainant points to a letter of complaint dated August 19, 2013 from someone who sought to purchase tickets through the Respondent’s website, but was disappointed when the Respondent was unable to supply the tickets and provided a full refund. The Complainant also says it has received a complaint from someone on August 20, 2014 who successfully purchased tickets through the Respondent’s website, but was upset to discover that the price it paid to the Respondent was higher than the face value of the tickets.
The Complainant states that it has received numerous written complaints about (presumably) the Respondent’s website. However, it gives specifics about only two. Furthermore, the written complaint from only one third party is included in the Complainant. These examples do indicate some confusion about the nature of the Respondent’s website. Two instances of confusion, however, is not a sufficient basis for the Panel to infer that Internet users generally are being misled or confused, at least without some understanding of the volume of people using the Respondent’s website.
As the Panel has noted, the disclaimer is in a somewhat smaller font size than other text on the website. It is, however, part of the banner across the top of the page and in contrasting red colour. There was no disclaimer for the first four or so years of the website’s operation. However, the disclaimer was added before there appears to have been any complaint from the Complainant.
In the end, it is not necessary for the Panel to resolve the issues raised by these circumstances since, as discussed below, the Complainant has not established the third requirement under the Policy in respect of the first disputed domain name. See e.g. ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936 and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The situation with the second and third disputed domain names is different.
The second disputed domain name does not resolve to the same website as the first disputed domain name. As described above, it resolves to what appears to be a “parking page” with what appear to be pay-per-click links to a range of different sites including ticket and/or accommodation packages.
Some of these links appear to be related to the Complainant’s event. However, many (if not most) are not. Panels have repeatedly held that such websites or parking pages do not constitute a good faith offering of goods or services under the Policy where they depend on the use of a domain name taking advantage of someone else’s trademark. A number of Panel decisions on this issue are listed in the WIPO Overview 2.0 at paragraph 2.6. The disclaimer of any relationship between “Parkingcrew” and “the domain owner” does not affect this analysis. It is the Respondent’s responsibility to ensure that the domain name is not misused or, alternatively, that the misuse occurred despite its objections and best efforts to ensure that its domain name was not misused.
Accordingly, the Panel finds that the Complainant has successfully established the second requirement under the Policy in respect of the second disputed domain name.
The third disputed domain name has not resolved to an active website. The Respondent has not sought to explain this inactivity. Nor has the Respondent made any claim that it has been making preparations to use the third disputed domain name or otherwise sought to explain any delay. As the website is and appears at all times to have been inactive, the justification that it has been registered and used in connection with the Respondent’s business of buying and selling tickets to the Complainant’s event cannot be sustained.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the second and third disputed domain names. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy in relation to the second and third disputed domain names also.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent claims it registered the first disputed domain name in connection with its business of buying and selling tickets to the Complainant’s event and not as a pretext to some other intent. That is in fact what the record in this administrative proceeding shows the Respondent has used the first disputed domain name for.
In these circumstances, like the learned panel in ITT Manufacturing Enterprises, Inc., supra, noting that the Respondent has taken some steps to avoid confusion (i.e. by way of disclaimer) the Panel is unable find the bad faith element in relation to the first disputed domain name.
The situation with the second and third disputed domain names, however, is different. Neither has been used in connection with the business purpose applicable for the first disputed domain name. Accordingly, the exculpation applicable to the first disputed domain name does not apply to either the second or third disputed domain names. The Response does not attempt to grapple with this. Instead, it asserts that each disputed domain name has been used since 2011 in connection with the Respondent’s business of reselling tickets to the Complainant’s event.
The Registrar, however, has confirmed that both the second and third disputed domain names were registered only in 2015. The evidence filed by the Complainant also shows that neither the second nor the third disputed domain name has been used in the way the first disputed domain name has. The Respondent does not provide any evidence to rebut this.
In these circumstances, the Panel accepts the Complainant’s contention that the second and third disputed domain names have been registered and used in bad faith. Accordingly, the Complainant has established the third requirement under the Policy in respect of the second and third disputed domain names.
The Respondent has requested a finding that the Complainant has engaged in reverse domain name hijacking under paragraph 15(c) of the Policy. This must fail at least in respect of the second and third disputed domain names.
Much of the basis for the Respondent’s claim to a finding of reverse domain name hijacking is predicated on the Respondent’s view that the Complainant’s trademark is simply a generic term in which trademark rights cannot subsist. For the reasons set out above, the Panel has rejected that claim. Accordingly, the Panel is not prepared to make a finding of reverse domain name hijacking in respect of the first disputed domain name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <edinburghtattooticket.com> and <edinburghtattootickets.net> be transferred to the Complainant.
The Complaint is denied in respect of the first disputed domain name, <edinburghtattootickets.com>.
Warwick A. Rothnie
Date: January 4, 2017
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