1. The Parties The Complainant is Etixx NV of Nazareth, Belgium, internally represented.
The Respondent is Jeremy Berry of Collierville, Tennessee, United States of America, self-represented.
2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2014. On November 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 21, 2014, the Registrar transmitted by email to the Center its verification response 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Response was filed with the Center on December 21, 2014.
The Center appointed John Swinson as the sole panelist in this matter on January 7, 2015. 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.
4. Factual Background The Complainant is the company Etixx NV of Nazareth, Belgium. The Complainant specializes in the research, development and marketing of sports nutrition products. It is part of the international Omega Pharma group of companies. The Omega Pharma group of companies has affiliates or subsidiaries in 35 countries worldwide. “Etixx” is the umbrella brand for a complete range of nutritional products and supplements.
The Complainant owns the following trade marks for ETIXX:
- International Trade Mark Registration No. 1016579, with designation in Switzerland and the European Union (this trade mark is currently being transferred from Omega Pharma Innovation & Development NV to the Complainant, evidence of this transfer was provided) (registered June 4, 2009);
- Benelux Trade Mark Registration No. 0846882 (registered July 4, 2008); and
- Benelux Trade Mark Registration No. 0840325 (registered February 22, 2008);
(collectively, the “Trade Mark”).
The Complainant also owns various domain names featuring the Trade Mark, for example, .
The Respondent is an individual, Jeremy Berry, of the United States of America. The Respondent has worked in the secondary ticket market since 1998. In 2004, the Respondent opened his own ticket brokerage within the secondary ticket market.
The Disputed Domain Name was registered on July 9, 2004.
5. Parties’ Contentions A. Complainant The Complainant’s contentions are as follows.
Identical or Confusingly Similar The Disputed Domain Name is identical to the Trade Mark.
Rights or Legitimate Interests The Respondent is not using, and has not made demonstrable preparations to start using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name currently reverts to a website featuring pay-per-click links and commercial pop-up advertisements.
The Respondent is not commonly known by the Disputed Domain Name.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
Registered and Used in Bad Faith The Disputed Domain Name was registered primarily for the purpose of selling the registration to the Complainant for consideration in excess of the Respondent’s out-of-pocket expenses. To support this argument, the Complainant provided evidence of the Respondent’s attempts to sell the Disputed Domain Name to the Complainant, and the Respondent’s refusal to accept an offer which covered the direct expenses associated with the Disputed Domain Name. The website at the Disputed Domain Name stated “Click here to buy etixx.com for your website name”.
The Complainant provided evidence that the Respondent has registered almost 500 domain names. The Complainant infers that the Respondent’s intent is to sell these domains for profit.
B. Respondent The Respondent’s contentions are as follows.
Identical or Confusingly Similar The terms “etixx” and “etix” have been a part of the Respondent’s and his colleague’s everyday language for the Respondent’s entire career. In the United States of America, these are common generic terms, meaning “etickets”, “electronic tickets” or “digital tickets”. Electronic tickets are commonly issued in a number of industries (e.g., plane tickets and concert tickets). Further, the term “etixx” is merely descriptive, and has acquired no secondary meaning.
The Complainant has provided no evidence of intent to confuse or actual confusion. The Complainant has failed to show that the Disputed Domain Name is confusingly similar to the Trade Mark.
The products and services offered on website at the Disputed Domain Name (i.e., tickets to concerts, sporting events and similar) are clearly different from the products offered by the Complainant (i.e., nutritional products and supplements). In 10 years, the Respondent has never been contacted in relation to any confusion.
Rights or Legitimate Interests The Respondent has made a fair, descriptive use of the Disputed Domain Name for the sale of entertainment tickets in the form of electronic tickets. The Respondent provided historical evidence of three electronic tickets businesses operating websites from the Disputed Domain Name since the date the Respondent acquired the Disputed Domain Name.
The Respondent’s registration of the Disputed Domain Name pre-dates the Complainant’s first trade mark registration.
The Respondent had an active website at the Disputed Domain Name until August 2014. The Complaint was filed as soon as the Respondent parked the Disputed Domain Name. The key words associated with the Disputed Domain Name while it is parked are“concert” and “tickets”.
Registered and Used in Bad Faith The Respondent did not become aware of the Complainant until nine years after the Disputed Domain Name was registered. The Respondent and the Complainant are not competitors. The Disputed Domain Name was registered before the Complainant acquired trade mark rights.
The Respondent did not acquire the Disputed Domain Name to sell it to the Complainant. The Respondent has never directly solicited the Complainant. The Complainant instigated the discussions relating to the sale of the Disputed Domain Name and the Respondent’s responses and requests in those discussions were bona fide. As the Disputed Domain Name consists of a generic term, it has been widely sought after.
Even when no website was operating from the Disputed Domain Name, the Respondent was using it for email services, and to direct users to his other ticketing-related businesses.
6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel has verified that the Complainant has rights in the Trade Mark. The Disputed Domain Name is identical to the Trade Mark.
In light of the above, the Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name; and
- there is no evidence that the Complainant has given the Respondent any permission to use the Trade Mark.
The Respondent seeks to overcome the Complainant’s prima facie case by showing that it has been using the Disputed Domain Name in connection with bona fide businesses. In light of the Panel’s finding in relation to bad faith, the Panel does not need to decide this issue, but the evidence reviewed by the Panel strongly suggests that the Respondent did have legitimate interests in the Disputed Domain Name. See discussion below.
C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy outlines a non-exhaustive list of circumstances in which bad faith can be evidenced.
The Policy requires both registration in bad faith and use in bad faith. Here, the Complainant has failed to establish the former, and the Complainant’s case in relation to bad faith use is weak.
Generally, bad faith registration cannot be established if a disputed domain name was registered before trade mark rights were acquired. This is because the respondent will not have had the complainant’s rights in contemplation at that time (see paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein).
Here, the Complainant did not acquire registered trade mark rights until February 22, 2008, nearly four years after the Disputed Domain Name was registered. No evidence of trade mark use prior to 2008 was provided in the Complaint. As such, the Panel finds that the Complainant has failed to demonstrate that the Respondent had the Trade Mark in mind when he registered the Disputed Domain Name. Further, the Respondent’s subsequent use of the Disputed Domain Name (i.e., to advertise entertainment-related electronic tickets), does not reasonably lead to such an inference.
Additionally, the Respondent has submitted that the term “etixx” is generic. The Panel accepts that this term is used in relation to online ticket sales. The prefix “e” is widely used to indicate the electronic nature of a product, for example, “eBook” or “e-cigarette”. There is evidence demonstrating that the term “tixx” or “tix” is used to indicate “tickets”. The Respondent provided a comprehensive list of links to websites which use “tixx” to describe ticketing services. The descriptive nature of the term “etixx” further supports the Respondent’s submission that he did not have the Complainant in mind when he registered the Disputed Domain Name.
The evidence before the Panel demonstrates that Respondent used the Disputed Domain Name in the period 2002 and 2003 to market the sale of sports and concert tickets. This appears to be a legitimate, bona fide use of the Disputed Domain Name. The fact that the Respondent ceased such use in more recent times does not turn the Respondent into a cybersquatter.
There is no evidence before the Panel that the Respondent used the Disputed Domain Name in a way that was related to the Complainant’s business or to confuse Internet users in this regard.
The Complainant has submitted that the Respondent’s rejection of the Complainant’s offer of USD 500 for the Disputed Domain Name, and the Respondent’s statement that the reserve was set at USD 9,000, is evidence of bad faith. When this conduct is considered in the context of the descriptive nature of the Disputed Domain Name and the other offers that the Respondent had received, as well as the Respondent’s use of the Disputed Domain Name, the Panel does not consider that it can be used to support a finding of bad faith. There is no evidence that the Respondent set out to sell or market the Disputed Domain Name to the Complainant.
In light of the above, the Panel finds that the Complainant has not established the third element of the Policy.
D. Reverse Domain Name Hijacking The Respondent has asked that a finding of RDNH be made against the Complainant. Although the Complainant was unsuccessful, the Panel is not prepared to find that its Complaint was unjustified. The Complainant produced an arguable case for each element of the Complaint, and the Complainant succeeded on the first element.
The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in RDNH.