The recent legal decision by the World Intellectual Property Organization (WIPO) in Ticketmaster Corporation v. Bill Hicks helps establish that it does not make prudent sense for people to register domain names that incorporate trademarks belonging to others.

Ticketmaster provides ticketing services not only in the United States, but also worldwide, to over 8,000 clients and covering in excess of 350,000 events annually. Ticketmaster has registered the federal trademarks TICKETMASTER.COM and TICKETMASTER, as well as two stylized versions of these marks. Ticketmaster also has registered a number of variations of its marks in more than 79 countries.

In late 2003, Hicks registered 108 domain names through Go Daddy Software. These domain names include examples such as americanticketmaster.com, europeticketmaster.com, ticketmasteronlinetickets.com, ticketmastersuperbowltickets.com, ticketmastertheater.com, ticketermastervacations.com, ticketmasterworldseries.com, and ticktmasters.com. These domain names are disputed by Ticketmaster. Each of the domain names indicates that its Web page is "parked FREE at GoDaddy.com!" and includes advertising and links to certain Web sites. It is not certain whether these advertisements were initiated by GoDaddy.com or whether Hicks has gained any benefits from the advertising.

As is common with respect to domain name disputes, Ticketmaster proceeded with a WIPO arbitration against Hicks. In the arbitration, Ticketmaster argued that Hick's registration and use of the domain names violated its registered trademark TICKETMASTER. Ticketmaster further asserted that the domain names are confusingly similar to and incorporate an unauthorized use of the TICKETMASTER trademark. Additionally, Ticketmaster complained that the only real differences between its trademark and the domain names are prefixes and suffixes describing the geographic/target market or typographical variations intended to mislead consumers who mistype "ticketmaster" when trying to go to Ticketmaster's Web site.

Ticketmaster further asserted that Hicks has no legitimate interest in the domain names because he has not applied for any trademark registrations in relation to any of the domain names and because he is not commonly known by any of the domain names except to the extent his Web sites improperly bear those titles. Moreover, Ticketmaster argued that Hicks has not made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

Ticketmaster finally contended that the domain names were registered in bad faith based on the foregoing, the vast number of domain names registered, and Hicks' obvious knowledge of Ticketmaster's rights when he registered the domain names given Ticketmaster's long use and registration of the TICKETMASTER mark.

In the face of the array of many arguments asserted by Ticketmaster, how did Hicks respond? Perhaps because of the overwhelming strength of Ticketmaster's arguments, Hicks did not respond at all. Nevertheless, the arbitrator considered Ticketmaster's arguments to determine whether they in fact have merit. At the end of the day, the arbitrator agreed with Ticketmaster's positions.

The arbitrator first found that the domain names are confusingly similar to the TICKETMASTER mark. Indeed, 107 of the 108 domain names incorporate the entirety of the TICKETMASTER mark. As prior WIPO arbitration panels have ruled, the fact that a domain name wholly incorporates a registered mark of another is sufficient to establish confusing similarity. The only other domain name, ticktmasters.com, also was found to be confusingly similar to the TICKETMASTER mark because intentional typographical errors, as a matter of law, do not render a domain name dissimilar to a trademark.

The arbitrator further ruled that Hicks was not making a bona fide offering of goods or services in a legitimate manner in connection with the domain names. And because Hicks could not show that he was commonly known by any of the domain names, there was no evidence that Hicks has any rights or true interests in the domain names.

Finally, the arbitrator ruled that Hicks' registration of more than one hundred domain names containing variations of the TICKETMASTER mark provided "conclusive evidence" of bad faith. As a consequence, the arbitrator ordered that each and every one of the 108 disputed names must be transferred by Hicks to Ticketmaster.

The days of the Wild, Wild West of registering domain names and seeking improperly to profit from them are coming to an end. People who seek to register domain names that incorporate the registered trademarks of others likely will find themselves in a WIPO arbitration proceeding or a court of law, where money damages are awardable.

Eric Sinrod is a partner in the San Francisco office of Duane Morris (www.duanemorris.com), where he focuses on litigation matters of various types, including information technology disputes. His column appears Wednesdays at USATODAY.com. His Web site is www.sinrodlaw.com, and he can be reached at ejsinrod@duanemorris.com. To receive a weekly e-mail link to Mr. Sinrod's columns, please send an e-mail with the word Subscribe in the Subject line to ejsinrod@duanemorris.com.

Reprinted here with permission from USAToday.com.