Claim Number: FA0804001180752
Complainant is Maryland Jockey Club of Baltimore City, Inc. (“Complainant”),
represented by Susan B. Flohr, of Blank Rome LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <preaknesscelebration.org>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2008.
On April 23, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <preaknesscelebration.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 27, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 27, 2008.
A timely Additional Submission from Complainant was received and determined to be complete pursuant to Supplemental Rule 7 on May 30, 2008. On June 4, 2008 Respondent had furnished his Response to the Additional Submission of Complainant.
On June 4, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
· Complainant, Maryland Jockey Club of Baltimore City, Inc. (“Jockey Club”) has inter alia contended that it conducts thoroughbred horse racing events and has continuously and extensively provided these services since 1925 under the PREAKNESS Marks. Jockey Club also has continuously and extensively used the PREAKNESS mark since 1961 on novelty buttons; drinking vessels; t-shirts, sweatshirts, golf shirts, jackets, sweaters, vests, and caps; and ornamental pins. Jockey Club, itself and through its licensees, have also used the mark PREAKNESS CELEBRATION in commerce since 1988 in association with week-long celebration and events leading up to the running of the Preakness Stakes horse race.
Complainant has placed reliance on certain
· It is further contended by Complainant that Respondent has registered the domain name <preaknesscelebration.org> and is seeking to trade off of Jockey Club’s distinctive and famous PREAKNESS Marks, as well as the renown and goodwill acquired in those marks, through parking the domain name on a page replete with links to other website and service providers, none of which is associated with Jockey Club.
Jockey Club, a
· Through its websites found at <marylandracing.com> and <preakness.com> and through other means, Jockey Club continues to advertise its horse racing exhibitions and sell its goods bearing the famous PREAKNESS mark. On or about September 2005, Preakness Celebration, Inc., a licensee of Jockey Club’s PREAKNESS marks, inadvertently allowed its registration of the disputed domain name <preaknesscelebration.org> to lapse. It had used the websites to advertise the week-long events that took place in conjunction with the running of The Preakness Stakes horse race. Soon thereafter and without Complainant’s knowledge, Respondent registered the domain name <preaknesscelebration.org>.
· Respondent is using the disputed domain name to ostensibly earn click-through revenue by displaying a series of hyperlinks that open to websites not owned by Jockey Club or its licensees. Further, the disputed domain name, <preaknesscelebration.org>, resolves to a parking page that feature links to third party websites that offer a variety of services. See sample of parking pages of the disputed domain, including a serious of hyperlinks that open to websites not owned by Jockey Club or its licensees.
On March 19, 2008, Preakness Celebration, Inc. sent via email a letter
demanding the registrant, namely, Timothy Womack, cease infringing Jockey
Club’s PREAKNESS Marks and transfer the domain. Complainant has relied upon copy
of Preakness Celebration, Inc.’s March 18, 2008 letter. Preakness Celebration,
Inc. received a response from Mr. Womack agreeing to settle this matter if
Preakness Celebration, Inc. offered to purchase the domain. In order to resolve the matter amicably and
expeditiously, Preakness Celebration, Inc. offered to purchase the domain for
between $1,000 - $1,500, in order to reimburse Respondent’s out of pocket
expenses, as well as some monetary remuneration for preserving the domain. In
response, Respondent agreed to transfer the domains for either a flat fee of
$7,500 or $5,500 plus eight (8)
· Respondent’s domain name <preaknesscelebration.org> is confusingly similar to Complainant’s PREAKNESS marks. Consumers will mistakenly believe that the domain name in dispute is related to the Jockey Club.
· Jockey Club need not rely solely on PREAKNESS mark. Even when Jockey Club is still to register PREAKNESS CELEBRATION service mark, it is nonetheless protected under common law rights.
· In recognition, therefore, of Jockey Club’s superior rights, Jockey Club requests that the infringing domain name, <preaknesscelebration.org>, be transferred.
· Respondent herein is Tim Womack c/o TLI Digital. It has been contended by Respondent herein that in July of 2002, according to SEC 8-K filing, Complainant, The Maryland Jockey Club (“MJC”) and Magna Entertainment Corp. ("Magna") (NASDAQ: MIEC; TSE: MIE.A MEH) purchased a majority of shares in the Pimlico Race Course and Laurel Park, which are operated under the trade name "Maryland Jockey Club.” In September of 2007, Magna purchased the remaining shares and now owns the MJC, exclusively.
Respondent has contended that according to
public records, “Magna’s principal activity is to acquire, develop, and operate
horse racetracks and related wagering operations. The Group operates in two
segments: 1) Racing Operations and 2) Real Estate and Other Operations.
Currently, the Group operates or manages eight thoroughbred racetracks and one
standard-bred racetrack. The Group also operates simulcast wagering venues
· With 5,300 employees, Magna’s estimated 2007 earnings totaled $625,720,000.00 US Dollars. Through its subsidiary, MJC, Magna seeks to deprive Respondent, a minority-owned, Maryland technology consulting and web developer, of its legal rights to host a community “celebration” website that it has owned, operated, and controlled without challenge for over four years. Neither Magna Entertainment nor MJC disputed ownership of the domain until 2008. In fact, the MJC benefited from the domain name and voluntarily linked from the primary MJC site <Preakness.com> to Respondent’s domain, until April of 2008.
· Magna, itself, neither offered to purchase the domain from Respondent nor to pay for past domain hosting services. After nearly eight years of use of the term “Preakness celebration” by people and organizations other than MJC, the MJC registered <preaknesscelebration.net> and purchased <preaknesscelebration.com>.
· Respondent herein, Mr. Womack provides technology consulting services, in the Baltimore-Washington area. Respondent has been a practicing consultant for more than 10 years, during which time he has designed and implemented major projects, including enterprise-level networks and websites.
· Respondent maintained and paid domain hosting fees for the domain with the intent of using the domain in a non-infringing and non-competing use. Sometime in 2005, Mr. Womack was asked by a former board member of the non-profit to allow the non-profit to use the domain until Respondent had a better use. Respondent at its own expense directed Internet traffic to the State and City sponsored non-profit organization.
· Respondent has contended that he devotes a significant amount of his time to providing discounted services for non-profit and community organizations. Respondent and TLI Digital do not engage in the buying and selling of domain names. All domains registered are for either personal use or use of their clients. In over ten years of business, Respondent has never sold a domain for profit.
· In or about 2005, Mr. Womack had learnt that a domain that he had worked on in prior years had expired and was available for purchase. Mr. Womack believed that the domain could be used by his friends to organize traditional, private Preakness parties or could be used by one of his many clients.
After several months of the domain being
“parked” at the registrar, he was asked by a business associate to point the
domain on a limited basis to a non-profit organization that organized various
· Complainant has no common law right for PREAKNESS CELEBRATION. In any case, these words are descriptive and are used by Maryland Preakness Celebration, (“MPC”). There is no authorization or permission from MPC in favour of Complainant. The undated letter relied upon as an agreement of license does not contain the words – PREAKNESS CELEBRATION and the so called license mentions PREAKNESS FESTIVAL not relevant for the present case.
· MJC itself never had any such right to – PREAKNESS CELEBRATION. It cannot grant any license to any one. In any case, there is neither any infringement nor showing of intent to infringe by Respondent.
· Respondent has further contended that in fact present is a case where MJC has attempted to reverse domain hijack. After failing to unseat Respondent’s right in the domain name, Complainant acquired <mdpreaknesscelebration.org> in 2007 and purchased <preaknesscelebration.com> from a domain auction broker in April, 2008.
· There is no substance in the contention of Complainant in the amendment to the original Complaint seeking to allege a breach of fiduciary duty in the initial registration of domain.
· Respondent is not to produce evidence of use or intent to use the domain for showing its bona fide in offering its defense against the allegation of Complainant of bad faith against Respondent. It is for Complainant to prove that faith. MPC had abandoned the domain name <preaknesscelebration.com>in April, 2003 and then abandoned <preaknesscelebration.org> in March, 2006.
· A party is entitled to conduct a business of capturing generic domain names which become available in a market place, often through failure to renew registration. The lapse on the part of the MPC in not renewing its domain name should be deemed - “intentional abandonment.” Complainant had itself purchased from a domain broker, the domain name <preaknesscelebration.com> in April, 2008. There is no explanation by Complainant as to why the domain was not renewed or transferred.
The Preakness Stakes takes its name from the
first Pimlico “Dinner Party Stakes” winner.
See “How the Preakness Got its
Name.” Presently, it shares that name
with a town in
· Respondent stipulates that Complainant, Maryland Jockey Club (“MJC”) and its owner Magna Entertainment Corp (hereinafter, collectively, “MJC” or “Maryland Jockey Club”) have established trademark rights in the terms “PREAKNESS” and “PREAKNESS STAKES,” in connection with the respective goods and services recited in the complaint.
· The domain search engine <namedroppers.com> shows 148 domains with term “Preakness;” including, <preaknesshomes.com>. The majority of these domains are not owned by Complainant nor does it appear Complainant has attempted to enforce the exclusive use of the mark “Preakness” in these domains. For example, there is a domain <Preakness-tickets.com> that offers Preakness race tickets for sale.
“Preakness” is also associated with a well known
· Respondent in its original response contends that the entire attempt on the part of Complainant is to deprive Respondent of its legal right to host a community “CELEBRATION” website which is owned and operated by Respondent. Respondent has further contended that Complainant itself has registered <preaknesscelebration.net> and has purchased <preaknesscelebration.com>. Respondent has further referred to various other entities which are using the word PREAKNESS in their incorporated names.
· Respondent has contended that Complainant is not the owner of the disputed domain name. The Maryland PREAKNESS CELEBRATION Inc. is also neither Complainant nor any subsidiary thereof.
· Respondent has contended that no evidence has been furnished by Complainant. All its apprehensions are merely speculative in nature. The term “PREAKNESS” being used by a number of entities and therefore there cannot be any claim by Complainant that the word PREAKNESS is associated with Complainant.
· Respondent further contends that its domain name in question does not infringe any of the claimed rights of Complainant. Respondent in alternative has also contended that the use of the term PREAKNESS CELEBRATION by Respondent is covered by the fair use doctrine. Another argument which has been raised by Respondent is that the words “PREAKNESS CELEBRATION” are merely descriptive and require secondary meaning in order to be protected as a distinctive source identifying mark. It is the contention of Respondent that Complainant has not furnished any evidence of the consumer associating “PREAKNESS CELEBRATION” with Complainant and therefore the claim of Complainant for protection is unfounded.
· Respondent has admitted in his Response that registration of the disputed domain name by him was on the premise that it could have been put to many uses including sale to a non-competing entity. Respondent on the contrary has contended reverse hijacking by Complainant.
The panel finds that the domain <preaknesscelebration.org> belongs to Complainant as Complainant is the owner thereof.
Respondent registered and is using the disputed domain name to point to a web site that offers advertising links and products, some related to Complainant’s mark and some unrelated.
Respondent does not have any license or other agreement to use Complainant’s famous mark.
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;
(1) Respondent has no rights or legitimate interests in respect of the domain name; and
(2) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Respondent has admitted in his response to the complaint of Complainant that the website was originally designed by him in 2001. Respondent has referred to the original website designed by him annexed by Complainant as Exhibit – G to the Complaint. The perusal of Exhibit – G, admittedly designed by Respondent, records that the copyright of the website belongs to “Preakness Celebration” and PREAKNESS is a registered trade mark of Complainant. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy 4(a)(i)).
Complainant in support of its case has contended that Complainant and its licensee have used the PREAKNESS CELEBRATION mark since at least as early as 1988 to promote and advertise a week long series of events and exhibition leading up to the conduct of horse races known as PREAKNESS STAKES. The further contention of Complainant in the Complaint is that Complainant has continuously and exclusively used the PREAKNESS mark since 1961 for various items by itself and through its licensee. It has also used the mark PREAKNESS CELEBRATION in commerce since 1988. The PREAKNESS STAKES horse race during the annual one week event is being seen by millions of persons and had become collectively and distinguished identifier of source of Complainant’s goods and services.
It has emerged on the record that the words PREAKNESS and PREAKNESS STAKES are registered in the name of Complainant. Domain names, i.e., <preaknesscelebration.com> and <preaknesscelebration.in> belong to Complainant. The domain name <preaknesscelebration.com> was registered by the licensee of Complainant, who Complainant had authorized to use the domain name by a license agreement in 1999.
Admittedly, this registration of <preaknesscelebration.com> had lapsed. Immediately thereafter this domain has been registered by Respondent. There is no dispute that it is the same lapsed domain name which has been registered by Respondent. Thus the Panel finds that the disputed domain name is identical to Complainant’s PREAKNESS CELEBRATION mark or at least confusingly similar to Complainant’s PREAKNESS mark.
Rights or Legitimate Interests
As stated above, Respondent has admitted in the response that the website for the disputed domain name was designed by him. The Panel is of the view that on account of this admitted fact, Respondent should be held to be estopped from raising any argument against Complainant.
Complainant has contended that there is no bona fide use by Respondent nor does Respondent have any legitimate interest in the disputed domain name. Respondent is not known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). The absence of legitimate rights in the disputed domain name is further evidenced by the fact that Respondent registered the disputed domain name soon after the licensee of Complainant had inadvertently allowed the registration thereof to lapse after using this domain to advertise the PREAKNESS CELEBRATION events. Complainant further contends that there is no fair use of the domain name by Respondent and on the contrary the registration of the disputed domain name by Complainant is apparently bad in faith. The registration of the disputed domain name by Respondent, Complainant contends, is not for any legitimate rights. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding the respondent’s opportunistic registration of the complainant’s domain name, shortly after its lapse, to weigh strongly in favor of a finding that the respondent has no rights or legitimate interests in the disputed domain name).
Further, the Panel
would not like to go into the question of violation of fiduciary relationship
between Complainant and Mr. Steven S. Stern, an Attorney licensed to practice
in the State of
Mr. Steven S. Stern, in relation to the allegation of violation of fiduciary relationship, while denying the same, has asserted that he would be covered by D&O policy. Discussions between Mr. Steven S. Stern and Respondent for hosting of the domain, payment for the expenses for purchase of the domain, adjustment of the consideration amount through money and free tickets have also been incorporated therein.
Having regard to the totality of facts and circumstances of the present case, the Panel has no hesitation in coming to the conclusion that Respondent has no legitimate interest in the disputed domain name.
Registration and Use in Bad Faith
It deserves to be re-emphasised that Respondent had designed the website for the disputed domain name further admitting that the copyright and other rights in relation to the said website do not belong to Respondent. The fact that Mr. Steven Stern and Respondent are close friends having common business interest is also relevant in the facts and circumstances of the present case.
Respondent’s assertion that he was unaware of Complainant’s famous marks is contradicted by Respondent’s own website, which features those marks prominently.
Complainant in the factual summary incorporated in the Complaint, has stated that on or about September 2005 “Preakness Celebration, Inc.,” a licensee of Complainant’s PREAKNESS marks, inadvertently allowed its registration of the disputed domain name <preaknesscelebration.org> to lapse. When Respondent in its response had disputed that Complainant had never owned the disputed domain name and its former owner had abandoned the same, Complainant along with its additional submissions has made available a copy of the License Agreement between Complainant and Maryland Preakness Celebration, Inc.
It had been agreed between the parties to this license agreement of 1999 that Maryland Preakness Celebration, Inc. who organises an annual festival for promoting the State of Maryland and City of Baltimore in connection with the horse race held annually on the 3rd Saturday in May, will be permitted by Complainant to use the word “Preakness” in connection with the Preakness festival and would also have the right and authority to grant licenses to the third parties to use the word PREAKNESS. The rights and obligations of both the parties for the protection of the word PREAKNESS are clearly defined in this license agreement including clause-8 thereof. Respondent has raised a plea that the license agreement is not bearing a date and, therefore, the existence thereof should not be accepted. In the alternative, Respondent in his Response to the Additional Submissions, has contended that even when the existence of such a license between the parties is accepted, this license agreement is not for the term “Preakness Celebration.”
In this regard, the Panel finds that though the license agreement does
not bear a specific date, it had been executed in the year 1999. It clearly relates to an annual festival for
promotion of the race event conducted by Complainant. Complainant had authorised the user of the
mark “Preakness” for this annual festival.
The word “Celebration” is a part of the corporate name of the licensee. Respondent in the original response to the
complaint has stated that the term “Preakness Celebration” was not registered
to Complainant but was registered by – “The Maryland Preakness Celebration,
Inc.”. In the light of this position,
the Panel has no difficulty in arriving to the conclusion that holding of an
annual festival for promotion of horse racing for a period of one week is
directly relatable to Complainant only. Complainant
has undoubtedly the ownership to the term PREAKNESS. Through the license agreement of 1999, Complainant
had licensed “
The Panel also observes that Complainant is a club. It is not an individual having a direct commercial interest in the domain name. The club depends upon its representatives, members etc., for protection of its rights. They in turn depend upon the persons who provide their professional services and advice. They thus deserve a higher degree of protection for their rights. Allegations of abandonment regarding non – renewal of marks/domain names, which are nothing but assets for any such entity – would deserve consideration with a lot of circumspection towards such entities.
Even when nothing may be found to be objectionable or illegal in the trading of non – renewed domain names, however, such entities would certainly deserve a higher degree of protection and consideration for claiming their rights in relation to marks and domain names especially from those who had acquired similar or same non – renewed marks / domain names for demanding hefty amounts from the original owners and / or intending to use those marks for the benefit of others.
The Panel has no hesitation in observing that when such entities, viz., trusts, societies, clubs etc. where the protection of their assets/rights etc. is entirely in the hands of its members, directors, representatives, employees and/or professional engaged by them – they would deserve much more latitude in any exercise or proceeding for recovering/regaining their rights/assets. In any case, persons who acted as agents either for designing of the web or for the registration of the domain name – should remain estopped from raising any dispute or claiming any right in relation thereto against those who had engaged their services for those specific jobs.
The Panel is of the firm opinion that rights in any domain name do not extinguish just because timely renewal had not been obtained. Such right would also not extinguish even when the non – renewed domain name has been registered by any other entity.
Further, under such circumstances, as they exist in the present case, the exercise undertaken by Complainant to acquire its domain names, such as <mdpreaknesscelebration.org> in 2007 and purchased <preaknesscelebration.com> from a domain auction broker in April, 2008 – should be held to be an extremely natural exercise which any such entity is expected to undertake for being now vigilant about its rights and assets.
This domain name has been enjoyed by Complainant and / or its licensee for a fairly long time. In any case, Complainant has enjoyed the goodwill for the term – Preakness Celebration for its annual horse racing event of one week. Complainant has all the rights in relation to the domain name in question. Respondent has no legitimate interest in this domain name.
Whereas Respondent registered and is using the disputed domain name to point to a web site that offers advertising links and products, some related to Complainant’s mark and some unrelated, the Panel finds that Respondent is using the disputed domain name in bad faith under Policy 4(b)(ii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy 4(b)(iii) [and] (iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <preaknesscelebration.org> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Esq., Panelist
Dated: 1st July, 2008
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