Indianapolis Downs, LLC v.
Philip Mazzone c/o Muzzhound and listmytimeshare
Claim Number: FA0901001244694
PARTIES
Complainant is Indianapolis
Downs, LLC (“Complainant”),
represented by David A. Wheeler, of Greenberg Traurig, LLP, Illinois, USA. Respondent is Philip Mazzone c/o Muzzhound and listmytimeshare (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <indianadowns.mobi>, <indianadownscasino.mobi>,
and <indianalivecasino.mobi>,
registered with Go Daddy Software, Inc.
The domain names at issue are <indianadownscasino.com>, <indianadownsgaming.com>,
and <indianadownsracingandcasino.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
On
A timely Response was received and determined to be complete on
On February 25, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett G. Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts trademark rights and alleges that the disputed
domain names are confusingly similar, if not identical, to its trademark.
Complainant alleges that Respondent has no
rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent
registered and used the disputed domain names in bad faith.
The detail of the Complaint is considered in
the Discussion which follows below.
B. Respondent
Respondent makes no reply to Complainant’s claim to trade mark rights
or its allegations of confusing similarity.
Respondent asserts rights in the disputed domain names “because they
were offered as "available" in the registrar.”
Respondent denies having acted in bad faith “because I currently have
the domain names parked at one of the registrars
website to monitor traffic in the form of clicks that the domain names receive
for possible future use and that is the "only" reason they are parked
at the registrars site.”
The Response does not otherwise bear on the matters to be considered
under the Policy.
FINDINGS
1.
Complainant
is a company that owns and operates horse racing and gaming facilities in
2.
Respondent
does not specify its business but appears to deal in domain names.
3.
Respondent is using the disputed domain names to
resolve to parking websites that display links to third-party websites promoting
goods or services which are either unrelated to, or in direct competition with,
those provided by Complainant.
4.
Respondent
asked for consideration of US$1.7 million for transfer of four of the disputed
domain names to Complainant.
5.
There is
no relationship between the parties, nor has Complainant authorized Respondent
to use its trademark or any domain name incorporating it.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Policy ¶ 4(a) requires that Complainant prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
As a threshold matter, Policy ¶ 4(a)(i)
requires Complainant to show rights in the relevant trademarks.
Complainant claims common law trademark rights in the words INDIANA
DOWNS. Policy ¶ 4(a)(i)
does not require proof of a registered trademark if Complainant can demonstrate
its common law rights through secondary meaning. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy); see also
The issue is whether Complainant has done enough to show common law trademark rights in the words INDIANA DOWNS. Complainant references decisions under the Policy made by panelists of the other major forum administering the UDRP, the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO has also published a so-called “Overview of WIPO Panel Views on Selected UDRP Questions.”
That Overview poses the Q&A of relevance to the discussion here:
1.7 What needs to be
shown for the complainant to successfully assert common-law or unregistered
trademark rights?
Consensus view: The complainant must show that the name has
become a distinctive identifier associated with the complainant or its goods
and services. Relevant evidence of such “secondary meaning” includes length and
amount of sales under the mark, the nature and extent of advertising, consumer
surveys and media recognition. The fact
that the secondary meaning may only exist in a small geographic area does not
limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the
complainant is based in a civil law jurisdiction.
Relevant decisions:
Uitgeverij Crux v. W. Frederic Isler,
D2000-0575 (WIPO
Skattedirektoratet v. Eivind Nag, D2000-1314
(WIPO Dec. 29,2000) Transferred.
Amsec Enterprises, L.C. v. Sharon McCall,
D2001-0083 (WIPO
Australian Trade Commission v. Matthew
Reader, D2002-0786 (WIPO
Decisions of the National Arbitration Forum
have underscored those same points.
Complainant makes a bald claim to common law
rights in the INDIANA DOWNS mark and the Panel is reminded of what was said in Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003):
Although Complainant asserts common law rights in the WELLSERV mark, it
failed to submit any evidence indicating extensive use or that its claimed mark
has achieved secondary source identity . . . [Complainant’s
claim that it is well known] is a finding that must be supported by evidence
and not self-serving assertions.
The evidence which might support the claim to
common law rights is limited to examples of the trading name INDIANA DOWNS; a
presence at the website www.indianadowns.com; and pending US Federal trademark
applications.
It is well established by prior decisions
under this Policy that a pending application for trademark registration does
not establish rights for the purposes of Policy ¶ 4(a)(i).
Complainant refers only to recently
filed applications for registration which are not in evidence and in any event
unlikely to have issued at the time of this decision.
Five pages from the website
www.indianadowns.com are in evidence.
They are of limited assistance to the Panel, especially since of the
many links to drill-down pages, one entitled “About Us” has not been
included. The three pieces of
information of note are (1) that the words “Indiana Downs” (with and without a
logo element) appear prominently on the homepage; (2) that “Indiana Downs”
seems to be the name of Complainant’s racing and betting venue and not the name
of the place where it is located. Should
the name have had geographical significance, Complainant would have faced an
increased burden to show secondary trademark significance; and (3), that the
web pages carry a 2002 copyright notice and from which it might be reasonably
deduced that the website has existed in some form for seven years.
Otherwise, the uncontradicted statements of
relevance in the Complaint are that all of Complainant’s facilities are
operated under the INDIANA DOWNS name, with the possible exception of a gaming
facility called
Taken together, the Panel finds that
Complainant has done just barely enough to establish rights in the trademark
INDIANA DOWNS.
That said, the Panel
has no hesitation in finding the following disputed domain names to be either
legally identical or confusingly similar to the trademark INDIANA DOWNS:
<indianadowns.mobi>
<indianadownscasino.mobi>
<indianadownscasino.com>
<indianadownsgaming.com>
<indianadownsracingandcasino.com>
In each
case, the gTLD “.com” or “.mobi” is trivial and can be ignored. In each case, the domain name wholly
incorporates Complainant’s trade mark.
The added words “casino”, “gaming” and “racing
and casino” are purely descriptive within the context of Complainant’s
business and the omission of spaces between the words is inconsequential. See, Vin Diesel v. LMN a/k/a L.M.
Nordell, FA804924 (Nat. Arb. Forum
The Panel accordingly
finds that Complainant has satisfied Policy ¶ 4(a)(i) in relation to the
disputed domain names <indianadowns.mobi>, <indianadownscasino.mobi>,
<indianadownscasino.com>, <indianadownsgaming.com> and <indianadownsracingandcasino.com>.
So far as the remaining disputed domain name <indianalivecasino.mobi> is concerned, there
is no respectable argument that it is confusingly similar to the trademark
INDIANA DOWNS, nor rightly does Complainant press such an argument. Instead, Complainant states that in January
2008 it entered into a written agreement with Live Holdings!, LLC, owner of a
US Federal trademark registration for “LIVE!”, under which Complainant would be
licensed to use the “LIVE!” mark in relation to the new casino project which
would be named INDIANA LIVE! CASINO.
The position of a trademark licensee under Policy ¶ 4(a)(i) was also considered by the WIPO Overview referred to
previously, the pertinent Q&A being:
1.8
Does a trademark licensee or a related company to a trademark holder have
rights in a trademark under the UDRP?
Majority view: In most circumstances a licensee of a trademark or a related company
such as a subsidiary or parent to the registered holder of a mark is considered
to have rights in a trademark under the UDRP.
Relevant decisions:
Toyota Motor Sales U.S.A. Inc. v. J.
Alexis Productions, D2003-0624
(WIPO
Grupo Televisa, S.A., Televisa, S.A. de
C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc.,
a/k/a Peter Carrington, D2003-0796
(WIPO
Spherion Corporation v. Peter Carrington,
d/b/a Party Night Inc., D2003-1027
(WIPO
Minority view: A complainant that holds a non-exclusive trademark license does not have
rights in a trademark under the UDRP.
Relevant decisions:
NBA Properties, Inc. v. Adirondack
Software Corporation, D2000-1211
(WIPO
The “Trademark License Agreement” between the Complainant and Live
Holdings! LLC is undated but stated to be effective as from January 2008. It is a non-exclusive license but the Panel
is unconcerned by that in spite of the WIPO minority view. Aside from the recitals to the agreement,
there is no further evidence that “LIVE!” is a Federally registered trademark,
however the Panel is entitled to accept
reasonable allegations and inferences set forth in Complaint as true unless the
evidence is clearly contradictory. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
Absent any contest by Respondent, the Panel finds that Complainant has
rights of a sort in the trademark
Complainant has the burden to establish that Respondent has no rights
or legitimate interests in the domain name.
Nevertheless, it is well settled that Complainant need only make out a prima
facie case, after which the onus shifts to Respondent to demonstrate rights
or legitimate interests. See Do The Hustle, LLC v. Tropic Web,
D2000‑0624 (WIPO
Notwithstanding the lack of a response to Complaint, the Policy states that any of the following circumstances, in particular but
without limitation, if found by the Panel to be proved based on its evaluation
of all evidence presented, shall demonstrate rights or legitimate interests to
a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of
the dispute, your use of, or demonstrable preparations to use, the domain name
or a name corresponding to the domain name in connection with a bona fide
offering of goods or services; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you
are making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
The WHOIS data does not support any argument that Respondent might be
commonly known by any of the disputed domain names. There is no evidence that Respondent has any
trade mark rights in any of the names.
Complainant has stated there to be no relationship between it and
Respondent.
Respondent is not using, nor has it presented evidence of any
demonstrable preparations to use the disputed domain name in connection with a bona
fide offering of goods or services.
The only use is bad faith use, as to which see more below. See Fox
News Network, LLC v. Reid, D2002-1085 (WIPO
The Panel finds that Complainant has established a prima facie
case that Respondent lacks rights or legitimate interests in any of the
disputed domain names, and that Respondent in failing to reply has not
discharged the onus which fell to it.
The Panel finds that Respondent has no rights or legitimate interests
in the domain names and so Complainant has satisfied the second limb of the
Policy.
Policy ¶ 4(b) sets out the
circumstances which shall be evidence of the registration and use of a domain
name in bad faith. They are:
(i) circumstances
indicating that you have registered or you have acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to a competitor of that complainant, for valuable consideration
in excess of your documented out of pocket costs directly related to the domain
name; or
(ii) you
have registered the domain name in order to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding domain name,
provided that you have engaged in a pattern of such conduct; or
(iii) you have
registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv) by using the
domain name, you have intentionally attempted to attract, for commercial gain,
Internet users to your website or other on‑line location, by creating a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of your website or location or of a
product or service on your website or location.
What is
noteworthy about Policy ¶ 4(b)(i)-(iv) is that they are all cases of both registration
and use in bad faith. In this case, Complainant
has relied specifically on Policy
¶ 4(b)(i). Submitted
with Complaint was an e-mail from Respondent offering to sell the <indianadownscasino.com>, <indianadownscasino.mobi>, <indianadownsgaming.com>, and <indianalivecasino.mobi> domain
names for US$1.7 million. Respondent
objects that it was Complainant who first approached Respondent to purchase the
domain names and that the price was marketplace consideration. Dismissing that objection, Panel
takes account of the numerous formative decisions which have held it unnecessary
for a respondent to make the first approach. Panel also underscores the fact that free
market pricing is only relevant to generic or other domain names registered in
good faith. See Marrow v. iceT.com, D2000-1234 (WIPO
Panel finds that Respondent’s actions fall
squarely under Policy ¶ 4(b)(i) with the result that
the <indianadownscasino.com>, <indianadownscasino.mobi>, <indianadownsgaming.com>, and <indianalivecasino.mobi> domain
names were all registered and used in bad faith.
That leaves unresolved the issue of bad faith
in relation to <indianadowns.mobi> and <indianadownsracingandcasino.com> in
relation to which Complainant seeks to apply Policy ¶ 4(b)(iii) and (iv). In
particular, Complainant asserts that Respondent is using the disputed domain
names to resolve to websites that contains links for third-party websites, some
of which directly compete with Complainant, thereby disrupting Complainant’s
business and constituting bad faith registration and use pursuant to Policy ¶
4(b)(iii). The
Panel is in agreement with that argument.
See Puckett, Individually v.
Miller, D2000-0297 (WIPO
Additionally, Complainant submits that the
websites which resolve from these disputed domain names display advertisements
and links to third party websites and from which Respondent receives
pay-per-click revenue, with the result that Respondent registered and used the
disputed domain names in bad faith under Policy ¶ 4(b)(iv). Again, the Panel agrees with that
submission. The likelihood of confusion
has already been found. Respondent
admits to parking the disputed domain names with a view to testing
traffic. The implication of financial
gain is more likely than not.
Accordingly, the Panel finds that all of the
disputed domain names were registered and used in bad faith and that
Complainant has satisfied the third and final limb of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indianadowns.mobi>, <indianadownscasino.com>,
<indianadownscasino.mobi>, <indianadownsgaming.com>, <indianadownsracingandcasino.com>,
and <indianalivecasino.mobi>
domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 11, 2009
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