Tennessee Walking Horse National Celebration Association v. Tennessee Walking Horse Breeders' and Exhibitors' Association
Claim Number: FA1206001448966
Complainant is Tennessee Walking Horse National Celebration Association (“Complainant”), represented by Stephen J. Zralek of Bone McAllester Norton PLLC, Tennessee, USA. Respondent is Tennessee Walking Horse Breeders' and Exhibitors' Association (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2012; the National Arbitration Forum received payment on June 15, 2012.
On June 18, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tennesseewalkinghorseworldchampionship.com, and postmaster@tennesseewalkinghorseworldgrandchampionship.com. Also on June 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
A. Introduction
This Complaint concerns the Respondent’s bad faith registration and use of a domain name consisting of Complainant’s distinctive mark. Complainant has been using the mark WORLD GRAND CHAMPION TENNESSEE WALKING HORSE since as early as 1939 to identify and distinguish its services in connection with Tennessee Walking Horses, including but not limited to providing recognition by the way of awards. Complainant is the owner of the federal registration for WORLD GRAND CHAMPION TENNESSEE WALKING HORSE. On September 20, 2011, Respondent registered the disputed domain names tennesseewalkinghorseworldchampionship.com and tennesseewalkinghorseworldgrandchampionship.com. On April 18, 2011, Complainant sent a letter to Respondent requesting it to transfer and assign its rights in the disputed domains to Complainant. On May 4, 2012, Respondent sent an email acknowledging that it is holding the disputed domains as “leverage,” and seeking at least “$5,000.” Respondent’s action epitomizes the very essence of cybersquatting.
B. Complainant’s Business and Mark
Complainant first used the mark WORLD GRAND CHAMPION TENNESSEE WALKING HORSE to identify and distinguish its entertainment services in 1939. Since that time, Complainant has continuously and exclusively used this mark.
Complainant owns the federal registration for the mark WORLD GRAND CHAMPION TENNESSEE WALKING HORSE with the U.S. Patent and Trademark Office (the USPTO) for use in connection with entertainment services, namely, providing recognition by the way of awards to demonstrate excellence in the field of the Tennessee Walking Horse, bearing Registration Number 3,251,340 on the Principal Register.
Complainant’s rights are incontestable, pursuant to 15 U.S.C. §1065.
The Certificate of Registration owned by Complainant constitutes “conclusive evidence” of “the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration.” 15 U.S.C. §1115.
Complainant also owns the domain name tennesseewalkinghorseworldgrandchampionship.net.
C. Respondent’s Registration
On or about September 20, 2011, well after Complainant’s adoption and first use of the WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark, Respondent registered the disputed domain names tennesseewalkinghorseworldchampionship.com and tennesseewalkinghorseworldgrandchampionship.com.
There is no evidence that Respondent has any trademark or other rights in the disputed domain names tennesseewalkinghorseworldchampionship.com and tennesseewalkinghorseworldgrandchampionship.com.
D. Identity and Confusing Similarity
The disputed domain names are nearly identical in appearance, sound, meaning and commercial impression to Complainant’s WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark, as required by paragraph 4(a)(i) of the Policy.
The fact that the disputed domains reverse Complainant’s federal registration, deleted the word “grand” from one disputed domain, and uses “championship” instead of “champion,” does not save Respondent from a finding that the disputed domains are nearly identical and, therefore, confusingly similar to Complainant’s federally registered mark.
Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words. See Shields v. Zuccarini, 254 F.3d 476, 483 (3d Cir. 2001) (finding that plaintiff's and defendant's internet domain names were confusingly similar, where defendant's domain names “closely resemble[d]” plaintiff's, and differed only because they contained “a few additional or deleted letters, or ... rearrang[ed] the order of the words”). Further, trademarks may be confusingly similar in appearance despite the addition, deletion or substitution of letters. See Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546 (Fed. Cir. 1990) (holding TMM to be confusingly similar to TMS, both for software); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490 (Fed. Cir. 1987) (COMMCASH held confusingly similar to COMMUNICASH, both for banking services); Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, § 6.a at 4 (finding domain name OKIAGIRLS.COM confusingly similar to the mark NOKIA because general noun GIRLS was a neutral addition to Complainant’s trademark); SGS Societe Generale de Surveillance S.A. v. Inspectorate, WIPO Case No. D2000-0025, § 6.1.2 at 8 (finding domain name SGSGROUP.NET confusingly similar to the mark SGS); State Farm Mutual Automobile Insurance Co. v. JIT Consulting, NAF Case No. 94335, at 3 (finding domain name STATEFARMDIRECT.COM confusingly similar to the mark STATE FARM); Kinko’s, Inc. v. eToll, Inc. f/k/a E Corp, NAF Case No. 94447, at 3 (finding domain name KINKOSOFFICE.COM confusingly similar to the mark KINKO’S).
E. Respondent’s Lack of Rights in Domain Name
Respondent is not related to Complainant in any way nor is it otherwise authorized to use Complainant’s mark.
There is no indication that Respondent is commonly known as WORLD GRAND CHAMPION TENNESSEE WALKING HORSE.
Respondent cannot be found under WORLD GRAND CHAMPION TENNESSEE WALKING HORSE in local telephone directories.
No available WHOIS data indicates that Respondent is known by anything other than its listed name.
Upon information and belief, Respondent has neither applied for nor registered WORLD GRAND CHAMPION TENNESSEE WALKING HORSE as a mark at either the state or federal level.
Respondent’s registration of the disputed domain names is not in connection with any bona fide offering of goods or services.
Respondent’s choice of Complainant’s distinctive marks supports a finding of lack of rights or legitimate interests. See Caterpillar, NAF Case No. 95034, at 3 (assuming Respondent knew of Complainant’s registered mark CAT); The Hamlet Group, Inc. v. James Lansford, WIPO Case No. D2000-0073, § 6 at 4 (inferring that Respondent was aware of Complainant’s registered mark “HAMBURGER HAMLET” and that Respondent did not independently conceive of domain name HAMBURGERHAMLET.COM); The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050, § 6 at 7 (finding no rights or legitimate interests in part because of “the fact that the mark BBC is not one that traders would legitimately choose in the context of provision of news, information and entertainment services unless seeking to create an impression of an association with the Complainant”); Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000- 0138, § 6.B at 3 (finding Respondent could not have legitimate interest in distinctive trademark unless it had prior rights in the name or was someone affiliated with the trademark’s owner).
Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain names and Respondent cannot establish that it has rights or legitimate interests in them. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (Respondent must rebut complainant’s prima facie case that respondent has no rights or legitimate interests in respect of a domain name.)
F. Respondent’s Bad Faith Registration and Use
In email dated May 4, 2012, Marty Irby, the president of the executive committee of Respondent organization states: “My goal is to use the website names as leverage . . . . Surely the two domains are worth $5,000 or more. If not we will just keep them for ourselves. . . .” Clearly Respondent’s registration of the disputed domain names is intended primarily for the purpose of selling the domain names to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names. Consequently, the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Additionally, Respondent has registered the domain names in order to prevent Complainant (who is the owner of the federal registration WORLD GRAND CHAMPION TENNESSEE WALKING HORSE) from reflecting the mark in a corresponding domain name, and Respondent has engaged in a pattern of such conduct, as demonstrated by the fact that Respondent registered not only one disputed domain name, but two.
In view of the foregoing, Respondent undoubtedly registered and is now using the disputed domain names in bad faith as required by paragraph 4(a)(iii) of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Paragraph 15(a) of 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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the 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) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends it has rights in the WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark. Complainant uses the mark in connection with entertainment and awards services. Complainant provided evidence of Complainant’s registration of the WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark (Reg. No. 3,251,340 registered June 12, 2007) with the United States Patent & Trademark Office (“USPTO”). Absent unusual circumstances, this provides adequate proof Complainant has rights in the WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark pursuant to Policy ¶4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant claims the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names are confusingly similar to the WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark. Respondent’s deletion of spaces between words and the addition of the generic top-level domain (“gTLD”) “.com” to each domain name fails to affect a Policy ¶4(a)(i) determination. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). To hold otherwise would be to evicerate the UDRP because spaces are not valid chargcters in domain names and all domain names must have a top level domjain identifier.
The addition of the generic suffix “ship” the word “CHAMPION” in Complainant’s mark does not prevent a finding of confusing similarity. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The deletion of the term GRAND from Complainant’s mark in the <tennesseewalkinghorseworldchampionship.com> domain name does not sufficiently distinguish the domain name from the WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Finally, Respondent’s re-arranging of the order of the words in Complainant’s mark does not make the disputed domain names distinctive from Complainant’s mark. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”). Therefore, this Panel finds the tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names are confusingly similar to the WORLD GRAND CHAMPION TENNESSEE WALKING HORSE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent is not commonly known by the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names. Respondent is not related to Complainant nor authorized to use Complainant’s mark. The Panel has also been provided with the WHOIS records for the disputed domain names which list “Tennessee Walking Horse Breeders' and Exhibitors' Association” as the domain name registrant. This is not sufficiently close for the Panel to find sua sponte Respondent is commonly known by the domain names. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). If Respondent wanted to make this claim, it could have appeared and done so. Therefore, the Panel finds Respondent is not commonly known by the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names under Policy ¶4(c)(ii).
Complainant further claims Respondent’s non-use of the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends the disputed domain names resolve to inactive websites. Panels have found that non-use of a domain name does not give the respondent rights or legitimate interests in the domain names. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question) and this Panel generally agrees. While it is perfectly possible a domain name may not have an active web site associated with it (such as being an email address or being a portal), Respondent does not make such arguments here. Therefore, the Panel finds Respondent’s non-use of the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use. In short, a Respondent who isn’t using the domain name in any fashion isn’t likely to have acquired any rights to the domain name in the cyber world.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent registered and is inactively holding the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names in bad faith. Complainant claims Respondent registered and is using the disputed domain name in order to sell them to Complainant for an amount in excess of its out of pocket costs. Complainant provides the Panel with an e-mail from Respondent regarding the disputed domain names which states the following in part:
“…My goal is to use the website names as leverage in a TWHNC Sponsorship if the EC sees fit. Surely the two domains are worth $5,000 or more. If not we will just keep them for ourselves. We have less than $30 in the names…”
In this context, “leverage” sounds distressingly like extortion. Panels have held when a respondent acquires a domain name with the intent to sell it for more than its out-of-pocket costs, the respondent acted in bad faith. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Therefore, this Panel finds Respondent registered and is inactively holding the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names in bad faith due to an intent to sell the domain names pursuant to Policy ¶4(b)(i).
Complainant further claims Respondent’s bad faith is clear because Respondent attempted to prevent Complainant from reflecting its mark in a domain name by registering the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names. The Panel notes Complainant owns the <tennesseewalkinghorseworldchampionship.net> domain, which contains its mark. The Panel does not believe Respondent has prevented Complainant from reflecting its mark in a domain name. While there might be some questions raised about registering more than one similar domain name, the facts of this case don’t support a finding of bad faith from the registration of only two domain names.
Complainant claims Respondent’s registration and non-use of the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names is a product of bad faith. The disputed domain names resolve to inactive websites and do not appear to be used for any other purpose. However, this Panel is not willing to go quite that far based upon these facts, especially since there are alternative grounds to find bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tennesseewalkinghorseworldchampionship.com> and <tennesseewalkinghorseworldgrandchampionship.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 17, 2012
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