Dream Horse Classifieds, a General
Partnership v. Don Mosley, individually, and Comprehensive Internet Solutions,
Inc., a corporation
Claim Number: FA0412000381256
Complainant
is Dream Horse Classifieds, a General
Partnership (“Complainant”), 3441 S. County Road 7, Loveland, CO
80537. Respondent is Don Mosley, individually, and Comprehensive Internet Solutions, Inc., a corporation (collectively,
“Respondent”), 12980 FR 44 S, Avery, TX 75554.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dreamhorse-classifieds.com>,
registered with Names4Ever,
Http://Www.Names4Ever.com.
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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
14, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 21, 2004.
On
December 15, 2004, Names4Ever, Http://Www.Names4Ever.com confirmed by e-mail to
the National Arbitration Forum that the domain name <dreamhorse-classifieds.com>
is registered with Names4Ever, Http://Www.Names4Ever.com and that Respondent is
the current registrant of the name. Names4Ever,
Http://Www.Names4Ever.com has verified that Respondent is bound by the Names4Ever,
Http://Www.Names4Ever.com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
December 27, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 17, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@<dreamhorse-classifieds.com>
by e-mail.
A
timely Response was received and determined to be complete on January 14, 2005.
On
January 25, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Timothy D.
O’Leary as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
I. Complainant’s Contentions
A. Identical or confusingly similar issue:
The domain name <dreamhorse-classifieds.com>
is confusingly similar to Complainant’s domain names of <dreamhorse.com>
and <dreamhorseclassifieds.com> which were registered and doing business
online as Dream Horse Classifieds prior to the registration of <dreamhorse-classifieds.com>. The only difference between the domain names
is a dash. Respondent’s web site is
titled “Dream Horse – Classifieds” with the only difference being a dash. Both web sites are in the business of
selling internet horse classifieds advertising and are direct competitors.
Complainant’s
domain names existed several years prior to Respondent’s domain name. <Dreamhorse.com> was created on March
13, 1997. <Dreamhorseclassifieds.com> was created on March 6, 1999
Respondent’s domain name of <dreamhorse-classifieds.com>
was created on October 1, 2002.
B. Rights or Legitimate Interest issue:
Respondent has internet horse classifieds sites
under several different domain names including horseclassifiedsy2k.com and has
historically done business under the name of Horse Classifieds Y2K. Respondent has no right to use the domain
name of <dreamhorse-classifieds.com> or “Dream Horse –
Classifieds” as this name has nothing to do with Respondent’s own business
name.
Respondent was NOT commonly known by the domain
name of <dreamhorse-classifieds.com>. Their business is known as Horse Classifieds Y2K or Classifieds
Y2K and other names.
Respondent is using the domain name of <dreamhorse-classifieds.com>
with the intent to misleadingly divert consumers or to tarnish the trademark or
service mark at issue. Respondent
obtained the domain name <dreamhorse-classifieds.com> in October
2002. Respondent created a horse
classifieds web site using the same color scheme as Complainant’s horse
classifieds web site.
C. Registration in Bad Faith issue:
Respondent has
registered the domain name primarily for the purpose of disrupting the business
of a competitor. Respondent’s business,
Horse Classifieds Y2K, is a direct competitor of Complainant’s business, Dream
Horse Classifieds, a general partnership, Federal Tax ID 84-1603806.
Respondent obtained the domain name <dreamhorse-classifieds.com>
in October 2002. Respondent created a
horse classifieds web site using the same lilac color scheme as Complainant’s
<dreamhorse.com> horse classifieds web site. In January 2003, Respondent sent a mass email to Respondent’s
customer list which caused widespread rumors in the online horse community to
the detriment of Complainant’s business which read in part as follows:
“Dear past user or visitor,
This email is to inform you that due
to lack of popularity, we have decided to close our internet Dream Horse –
Classifieds system in the near future.
We can no longer justify maintaining this system.
If
you are not already using it, the following system has shown to be a much more
popular and effective system and we recommend that you use it instead for
buying and selling your horses:
Horse
Classifieds Y2K
Internet
address = http://www.horseclassifiedsy2k.com
Thank you for any past support to
our Dream Horse – Classifieds system.
Sincerely,
Don
Mosley”
Respondent has intentionally attempted to attract,
for commercial gain, Internet users to Respondent’s web site or other on-line
location, by creating a likelihood of confusion with Complainant’s mark as to
the source, sponsorship, affiliation, or endorsement of Respondent’s web site
or location or of a product or service on Respondent’s web site or location.
Respondent has continued to use the domain name <dreamhorse-classifieds.com>
and did not “close” this “internet site” as indicated in the mass emailing of
January 2003 (above).
Respondent’s original lilac color scheme matched
Complainant’s color scheme. Complainant
changed to a blue color scheme and Respondent has followed suit by changing <dreamhorse-classifieds.com>
to a blue color scheme.
Complainant has received several customer service
complaints from customers in late 2004 who had mistakenly purchased photo ads
from <dreamhorse-classifieds.com> and then could not find their
ads on Complainant’s web site. These
customers indicated that their credit card statement contained a charge from
Respondent, “Comprehensive Internet Solutions.”
II. Respondent’s Contentions
A. Identical or Confusingly Similar issue:
At the time Respondent started <dreamhorse-classifieds.com>
it was not aware there would be a
conflict involved. Respondent did a WHOIS on that name and it was available
thus it purchased that domain name without malice. Respondent has since closed
that site the middle part of December 2004.
B. Rights or Legitimate Interest issue:
The site <dreamhorse-classifieds.com>
was closed the middle part of December 2004 so it will no longer be using that
site and will not be renewing that domain name.
C. Registration
in Bad Faith issue:
(i.)
Respondent
was not even aware of the other sites when it registered <dreamhorse-classifieds.com> That name was available when it searched the
WHOIS and it then purchased the domain with no intentions of harming anyone and
as stated earlier that site has been closed.
(ii.)
Respondent
states that in reference to the statement regarding the email sent to its
visitors, that also was not done in malice but to let its visitors know it was
discontinuing the site <dreamhorse-classifieds.com>, but when it
was notified that this was causing a problem Respondent stopped sending them
and felt that it needed to keep it open if it could not notify people of the
closing. Respondent was not aware of
any exclusive trademark rights for dreamhorse and still is not aware of any
trademark rights at the time it purchased the domain.
(iii.)
As for the
color scheme, Respondent states that it had many sites with a purple color
scheme but have since changed them to other colors more likeable on the
internet. Surely, Respondent argues, there are no rights on who has control of
what colors are used on the internet.
FINDINGS
A. Identical or Confusingly Similar issue:
Registration of
a mark with a relevant trademark authority is not necessary to bring a claim
under the Policy. See British Broad.
Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy
“does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks”); see
also Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not
require that a trademark be registered by a governmental authority for such
rights to exist.”).
Complainant
asserts that it has established common law rights in the DREAMHORSE.COM and
DREAMHORSECLASSIFIEDS.COM marks through continuous use of the marks in
commerce, specifically as domain names, since 1997 and 1999, respectively. Complainant contends that these marks have
acquired secondary meaning within the specialized horse-trading business.
I conclude that
Complainant has established common law rights in the marks. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law.”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000)
(finding that Complainant has common law rights in BROADCASTAMERICA.COM, given
extensive use of that mark to identify Complainant as the source of broadcast
services over the Internet, and evidence that there is wide recognition with
the BROADCASTAMERICA.COM mark among Internet users as to the source of
broadcast services).
Complainant
argues that Respondent’s <dreamhorse-classifieds.com> domain name
is confusingly similar to Complainant’s DREAMHORSECLASSIFIEDS.COM mark because
Respondent has merely inserted a hyphen into Complainant’s mark.
I find such a
minor addition to be insignificant in making a determination of confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Nintendo of Am. Inc. v.
This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding that the
<game-boy.com> domain name was identical and confusingly similar to
Complainant’s GAME BOY mark, even though the domain name was a combination of
two descriptive words divided by a hyphen); see also Pep Boys Manny, Moe, and Jack v. E-Commerce
Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen
between words of Complainant’s registered mark is confusingly similar).
I further find that Respondent’s domain name is confusingly
similar to Complainant’s marks due to the numerous instances of actual consumer
confusion that Complainant has documented and proffered as evidence as well as
the fact that both Complainant and Respondent operate in the same
industry. See Treeforms,
Inc. v. Cayne Indus. Sales Corp.,
FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result
when Internet users, intending to access Complainant’s website, think that an
affiliation of some sort exists between Complainant and Respondent, when in
fact, no such relationship would exist); see also Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636
(Nat. Arb. Forum Mar. 13, 2000) (“[L]ikelihood of confusion is further increased
by the fact that Respondent and [Complainant] operate within the same
industry.”).
B. Rights or Legitimate Interest issue:
Complainant asserts that Respondent is not commonly
known by the <dreamhorse-classifieds.com> domain name. I conclude that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
Complainant argues that Respondent is using the <dreamhorse-classifieds.com>
domain name to operate a horse listings website that directly competes with the
website owned and operated by Complainant.
I find that this use of a confusingly similar
domain name by Respondent is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
I conclude that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(a)(ii).
See Yahoo! Inc. v.
Web Master, FA
127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly
similar domain name to operate a pay-per-click search engine, in competition
with Complainant, was not a bona fide offering of goods or services); see
also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat.
Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests in a domain name that
utilized Complainant’s mark for its competing website).
Furthermore,
Complainant argues that Respondent has attempted to pass itself off as
Complainant by implementing a lilac color scheme on its horse classifieds
website that is identical to the one on Complainant’s horse classifieds
website.
I
find that such activity is evidence that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant
online, through wholesale copying of Complainant’s website, Respondent had no
rights or legitimate interests in the disputed domain name).
C.
Registration in Bad Faith issue:
Having found
that Respondent is using the <dreamhorse-classifieds.com> domain
name, which contains a confusingly similar variation of Complainant’s marks, to
operate a competing horse listings website, I conclude that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(iii). See Lubbock Radio Paging
v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where
Respondent and Complainant were in the same line of business in the same market
area); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat.
Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names
were registered for the primary purpose of disrupting the competitor's business
when the parties are part of the same, highly specialized field).
Additionally, I
find that Respondent had actual knowledge of Complainant’s marks due to the
fact that Respondent is using a domain name that is a confusingly similar
version of Complainant’s marks to operate a website offering services nearly
identical to those offered at Complainant’s website.
Thus, I conclude
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See Pfizer, Inc.
v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between Complainant’s mark and the content advertised on Respondent’s website
was obvious, Respondent “must have known about Complainant’s mark when it
registered the subject domain name”); see also Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”).
I find that
Respondent’s commercial use of the domain name, which is confusingly similar to
Complainant’s marks, caused actual confusion among consumers and is evidence
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or is sponsoring the services offered at the
site); see also Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent
intentionally attempted to attract Internet users to his website for commercial
gain by creating a likelihood of confusion with Complainant’s mark and offering
the same chat services via his website as Complainant).
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.”
Paragraph 4(a)
of the Policy requires that Complainant must 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.
DECISION
Having
established all three elements required under the ICANN Policy, I conclude that
relief shall be GRANTED.
Accordingly, it is Ordered that the <dreamhorse-classifieds.com>
domain name be TRANSFERRED from Respondent to Complainant.
Timothy
D. O’Leary
Dated: February 8, 2005
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