Split WIPO panel hands NASCAR licensee chequered flag
In a split World Intellectual Property Organization decision in HBP Inc v Front and Center Tickets Inc, NASCAR licensee HBP Inc has succeeded in its case against Fort Lauderdale ticket reseller Front & Center Tickets Inc (F&C) over the domain names 'daytona500tickets.net' and 'daytona500tickets.org'.
HBP is NASCAR's exclusive licensee in the United States for the DAYTONA 500 mark. F&C, a ticket broker and travel agent, registered the domain names 'daytona500tickets.net' and 'daytona500tickets.org' and established a website selling tickets to the Daytona 500 race (as well as other events). HBP initiated proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) requesting the transfer of both domain names.
The majority of the panel found that all three elements in Paragraph 4 of the UDRP necessary for a transfer order were present:
- HBP has rights in the registered mark DAYTONA 500 (and the addition of the word 'tickets' in the domain names did not distinguish them from this mark such as to avoid a finding of confusing similarity);
- F&C has no rights or legitimate interests in respect of the domain names despite the fact that it sells tickets to the Daytona 500 race; and
- F&C had registered and used the domain names in bad faith since, despite HBP's objections, F&C continued to use the DAYTONA 500 mark as the prominent heading on its web pages and failed to use an adequate disclaimer.
The dissenting panellist, while not explicitly favouring a nominative fair-use defence, posited what appears to be a species of estoppel. He had difficulty with the concept that HBP was aware of F&C's resale of Daytona 500 tickets, yet continued to sell tickets in bulk to the Florida-based company. Since HBP could have conditioned the purchase of such tickets on the non-use or transfer of the domain names (but did not), he found it troubling that HBP would then turn around and bring a cybersquatting claim against F&C. He also noted that a trademark allows the owner to prevent others from using the same mark for the others' goods, but the law does not go so far as to prevent another party from using the mark for the same goods - here Daytona 500 race tickets. While the panellist did not go so far as to find that this was a nominative fair use, he did not agree that the use of the name of the event in combination with the word 'tickets' amounted to cybersquatting.
Robert E Lyon, Holland & Knight LLP, Los Angeles
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