Indianadowns.mobi + 5 more domains

The timeline behind indianadowns.mobi

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION 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”), New York, USA. 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 January 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 28, 2009. On January 27, 2009, Go Daddy Software, Inc confirmed by e-mail to the National Arbitration Forum that the <indianadowns.mobi>, <indianadownscasino.mobi>, and <indianalivecasino.mobi> domain names are registered with Go Daddy Software, Inc and that the Respondent is the current registrant of the names. Go Daddy Software, Inc has verified that Respondent is bound by the Go Daddy Software, Inc 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 January 27, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <indianadownscasino.com>, <indianadownsgaming.com>, and <indianadownsracingandcasino.com> domain names are registered with Enom, Inc and that the Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the “Policy.” On January 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 2009 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@indianadowns.mobi, postmaster@indianadownscasino.com, postmaster@indianadownscasino.mobi, postmaster@indianadownsgaming.com, postmaster@indianadownsracingandcasino.com, and postmaster@indianalivecasino.mobi by e-mail. A timely Response was received and determined to be complete on February 19, 2009. 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 Indiana, USA. 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. Identical and/or Confusingly Similar 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 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.”). 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 Nov. 3, 2000) Transferred. Skattedirektoratet v. Eivind Nag, D2000-1314 (WIPO Dec. 29,2000) Transferred. Amsec Enterprises, L.C. v. Sharon McCall, D2001-0083 (WIPO May 3, 2001) Denied. Australian Trade Commission v. Matthew Reader, D2002-0786 (WIPO Nov. 12, 2002) Transferred. Imperial College v. Christophe Dessimoz, D2004-0322 (WIPO June 30, 2004) among others Transferred. 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 INDIANA LIVE! CASINO which opened in June 2008. The casino employs approximately four hundred people. Complainant states it plans to open a larger gaming facility this month, March 2009, connected to the “Indiana Downs” racetrack and projected to employ 750 people. Complainant maintains a related online presence at www.indianalivecasino.com and the pages in evidence from the website www.indianadowns.com show what looks like an artist’s impression of the new 70,000 square foot gaming facility. 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 Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top‑level domain (‘gTLD’) ‘.com’ [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that “CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). 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: Telcel, C.A. v. jerm and Jhonattan Ramírez, D2002-0309 (WIPO June 5, 2002) Transferred. Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, D2003-0624 (WIPO Oct. 16, 2003) Denied. 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 Dec. 2, 2003) Transferred. Spherion Corporation v. Peter Carrington, d/b/a Party Night Inc., D2003-1027 (WIPO March 10, 2004) Transferred. 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 Dec. 22, 2000) Denied. 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 July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Absent any contest by Respondent, the Panel finds that Complainant has rights of a sort in the trademark INDIANA LIVE! CASINO. For the reasons given earlier, the Panel finds the domain name <indianalivecasino.mobi> to be legally identical to that trademark and so Complainant has satisfied Policy ¶ 4(a)(i) in relation to the last of the disputed domain names. Rights or Legitimate Interests 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 Aug. 23, 2000); Hanna‑Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Jordan Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). 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 Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).). 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. Registration and Use in Bad Faith 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 Nov. 22, 2000) (stating that a panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant). 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 June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). 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 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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