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Orange Bowl ICANN UDRP Case Explores Fair Use

Mark Partridge

The resale of genuine products presents particular difficulties in domain name disputes, testing the application of fair use doctrine. Several domain name disputes involving the resale of event tickets illustrate the point.

I served as a panelist in one such case The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc., D2004-0947 (WIPO 2005). The decision, which issued with a dissent, explored fair use in the domain name context and addressed several related ticket resale disputes.

The complainant owned rights in the ORANGE BOWL name and operated a site at www.orangebowl.org.

The respondent was an online ticket broker, and no stranger to the UDRP process, as explained in the decision:

Respondent's conduct has been the subject of prior UDRP claims, including National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700, which found that Respondent violated the Policy by registration and use of domain names incorporating the marks NCAA, FINAL FOUR and MARCH MADNESS; and HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802, in which the majority found that Respondent's registration and use of <daytona500tickets.net> and <daytona500tickets.org> violated the Policy . . .

The case thus presented a contested issue of fair use. I joined the majority in stating:

We conclude that the Respondent's use of Complainant's mark in Respondent's domain name fails to meet the test for fair use because the ORANGE BOWL mark is used in Respondent's domain name not merely to describe, but also as an attention-getting device to attract Internet users to Respondent's site to sell other products, and because the domain name is used to sell products that it does not describe (e.g., Broadway show tickets, Las Vegas tickets, NFL tickets and tickets for competing college bowl events). By using the mark in the domain name, Respondent is using Complainant's mark more prominently than is necessary merely to describe its services. Moreover, the Complainant's mark is used in a way that triggers initial interest confusion regarding the relationship with Complainant in a way that is not adequately dispelled, for reasons more fully discussed below.

We recognize that the resolution of domain name disputes depends on the specific facts involved, and that prior decisions involving similar names may not be apposite due to factual differences. Nevertheless, it is significant to note that Respondent has been involved in at least two other ICANN UDRP decisions involving the use of another's trademark as a domain name to sell tickets online. National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Mark Helpern and Front & Center Entertainment, WIPO Case No. D2000-0700 (transferring domain names including <finalfourtickets.net> to the complainant); and HBP, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2002-0802 (transferring the domain name <daytona500tickets.net>). In each case, a decision was rendered finding that similar conduct by Respondent to that at issue here was not fair use and was a violation of the Policy.

Similarly, other panels have addressed disputes involving the addition of "tickets" to the name of an event. ISL Worldwide and The Federal Internationale de Football Association v. Western States Ticket Service, WIPO Case No. D2001-0070 (transferring <fifatickets.com>); The Professional Golfers' Association of America v. 24/7 Ticket Service, WIPO Case No. D2002-0258 (transferring <pgachampiontickets.com>). These decisions also conclude that the type of use made by Respondent is not fair use.

The exception to these cases is NCAA v. Randy Pitkin, WIPO Case No. D2000-0903, where the majority concluded that the respondent's use of the domain name <womensfinalfourtickets.com> and similar names was fair use and did not violate the Policy. A dissenting opinion concluded that respondent's use of the domain names at issue was not fair use. The NCAA v. Randy Pitkin, of course, turns on the specific facts of the case, and relied at least in part on Complainant's failure of proof, stating:

The Complainant fails to address the "fair use" defense, with the exception of the unsupported assertion in Complaint paragraph 18, Sentence 5 which states: "Respondents are able to conduct their business without using NCAA trademarks."

Here, Complainant has provided points and authorities to support a conclusion in its favor on the question of fair use.

* * *

Accordingly, for the reasons discussed above, we conclude that Respondent's use of Complainant's ORANGE BOWL mark in a domain name used in connection with the resale of tickets not only to the ORANGE BOWL game but also for tickets to a variety of unrelated and competing events is not fair use under the Policy. We further conclude, therefore, that Respondent lacks any right or legitimate interest in the use of ORANGE BOWL in its domain name and find in Complainant's favor on Paragraph 4(a)(ii) of the Policy.

The dissent had different view:

While the Internet domain name using only the trademark name of the event might be cybersquatting, and thus I agree with the award of the Internet domain name <orangebowl.net> to Complainant, a concession which apparently Respondent makes in its Reply Brief, without admission, I do not believe that this applies to the use of the name of the actual event coupled with the generic word "ticket."

When the trademark is also the name of an event, such as the Orange Bowl, use of the name of the event is not always a trademark use, but may be a nominative fair use, where the words "Orange Bowl" although they be a trademark, are being used for the name of the event. It is difficult to identify the event, particularly this one, since it is one of several "bowl" games, and cannot be identified by its date, which varies from year to year, and this year, for some reason, is on a Tuesday!

I submit that the Orange Bowl event is even harder to identify, without using the words which also are a trademark, then even the Super Bowl, since various words preceding the word Bowl are used to distinguish this game from others on nearby dates, which mark also apparently indicates a major product of the Florida location in which this particular bowl game is played. It cannot be distinguished by the identification of the teams, since USC, which often commands a seat at the Rose Bowl, this year is in the Orange Bowl.

To the extent that the Orange Bowl is the name of a venue, i.e., the particular coliseum or stadium where the Orange Bowl game is played, then it is also the name of venue for which the ticket will provide a seat license for the holder to sit in, and likewise the identification of this venue, together with the generic word "tickets" where the sale of tickets for this event in this location is being held, is also not, in my view, an unfair use.

It is my belief therefore that it is not bad faith to register the domain name which is also the "name of the game," together with the generic word "tickets "in this circumstance. Respondent has also placed a prominent disclaimer of sponsorship or association with the Orange Bowl on the face of its website, and understands the need to avoid a likelihood of confusion or mistake, if such exists. It may well be that selling a plethora of tickets to the named event at much higher prices then are normally garnered for this game, will also help avoid any likelihood of confusion or mistake in the use of the Internet domain name <orangebowltickets.com>.

Considering the point on which the dissent relies, the majority stated:

Even assuming that a disclaimer might be effective to remedy initial interest confusion in a way that would remedy the initial problematic use, Respondent's disclaimer does not dispel the initial interest confusion caused by the domain name itself and is inadequate to avoid likelihood of confusion at the site. Prior to this action, Respondent's website featured a disclaimer of affiliation with the NCAA that did not mention Complainant or the ORANGE BOWL mark. This was obviously inadequate to dispel confusion about the relationship of Respondent and its site with Complainant. Subsequent to the filing of this action, Respondent has modified its site and disclaimer.

The new disclaimer is also problematic. It states that "the FedEx Orange Bowl has neither licensed or endorsed Front and Center Entertainment Group to sell goods and services in conjunction with the FedEx Orange Bowl." The disclaimer is confusing in that it is limited the sale of "goods and services" in conjunction with the event and fails to address Respondent's relationship to Complainant with respect to the sale of "tickets." A person reading and understanding the disclaimer is not clearly informed whether or not Respondent as "a private ticket broker" is authorized by Complainant to resell ORANGE BOWL tickets.

We acknowledge that Respondent in part uses the domain name to resell ORANGE BOWL tickets, and in that limited sense persons are accurately informed about some of Respondent's products. However, they are not adequately informed about the relationship of Complainant to Respondent's site and tickets, and may incorrectly conclude Respondent's conduct, including pricing and sale of tickets to other events, is endorsed by Complainant, when in fact that is not the case.

In sum, as a result of Respondent's use of the famous and distinctive ORANGE BOWL mark in its domain name, consumers are likely to be brought to Respondent's website mistakenly believing it is authorized, "official" or endorsed by Complainant. Respondent is thereupon offering to sell tickets to events which compete with that of Complainant. This is a bad faith use of Complainant's mark. Once at the website, consumers are likely to continue to believe mistakenly that Complainant has authorized or endorsed Respondent's use of the ORANGE BOWL mark in connection with the resale of tickets to the ORANGE BOWL game and for other events.

By Mark Partridge, Managing Partner at Partridge IP Law
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Re: Orange Bowl ICANN UDRP Case Explores Fair Use Milton Mueller  –  Aug 09, 2005 5:40 AM PDT

Hello? Mark? Earth to Mark? Have you and all other UDRP panelists forgotten that UDRP was not meant to be a new form of precedent-based law, but a way to resolve the most blatant and obvious cases of abusive registration? ...and that all subtle issues (such as this one) were supposed to be left to national courts?

Where did we lose that commitment, and do you recognize your (completely illegitimate) role in straying from it? How exactly do you justify to yourself your usurpation of the power to define a global "fair use" law?

I know it appeals to the vanity of ordinary lawyers who will never be appointed to federal courts to put themselves in the position of law-making, but let's recognize the UDRP for what it was intended to be: A cheap form of rough justice meant to reduce transaction costs in the most blatant cases of cybersquatting. Stick to that, please. Your decision in this case, which ludicrously postures as a judicial decision resolving the most subtle nuances of fair use doctrine, is completely unwarranted. 

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