National Arbitration Forum

 

DECISION

 

Dream Horse Classifieds, a General Partnership v. Don Mosley, individually, and Comprehensive Internet Solutions, Inc., a corporation

Claim Number: FA0412000381256

 

PARTIES

 

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

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum