WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Triple Crown Productions, LLC v. 4URLS.COM
Case No. D2006-0083
1. The Parties
The Complainant is Triple Crown Productions, LLC, Louisville, Kentucky, United States of America, represented by Wyatt, Tarrant & Combs, United States of America.
The Respondent is 4URLS.COM, Kansas City, Missouri, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thetriplecrown.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 19, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 19, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact . The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2006..
The Center appointed Dennis A. Foster as the sole panelist in this matter on March 7, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant has used United States of America-registered TRIPLE CROWN service marks uninterruptedly since 1950.
The Complainant uses its TRIPLE CROWN trademarks in conjunction with the three most famous horse races in the United States, viz., The Kentucky Derby, The Preakness, and The Belmont Stakes.
The disputed domain name, <thetriplecrown.com>, was registered by the Respondent on April 29, 1999. Recently, the Respondent has been offering the disputed domain name for sale on the Internet for $8,000.
5. Parties’ Contentions
Due to its long, continuous and extensive use, the Complainant’s TRIPLE CROWN service mark has become one of the most famous trademarks in sports, recognized by millions of people in the United States and abroad.
The disputed domain name, <thetriplecrown.com>, is virtually identical to the Complainant’s registered TRIPLE CROWN service marks.
The Respondent is a buyer, seller and registrant of domain names.
On the website linked to the disputed domain name, <thetriplecrown.com>, Respondent makes it clear that this domain name is for sale and that it would be perfect for Complainant’s business. For this domain name, Respondent is seeking the hefty sum of $8,000 (Complaint Exhibits 1g and 1h).
Respondent is not using the disputed domain name for a bona fide offering of goods and services. Instead of using the domain name, the Respondent seeks to sell it for $8,000.
Respondent is not commonly known by the name “The Triple Crown”, but is rather known as 4urls.com.
The Respondent is not engaged in criticism, scholarship, political advocacy or the exercise of any First Amendment right.
A strange alignment of Jupiter and Mars did not cause Respondent to register the disputed domain name. At the time Respondent took this action, it was fully aware that the famous TRIPLE CROWN mark was used in reference to the three most famous horse races in the United States: The Kentucky Derby, The Preakness and The Belmont Stakes.
The Respondent has violated the bad faith provision of paragraph 4(b)(i) of the Policy. The Respondent took the Complainant’s famous mark, incorporated it into a domain name, and then advertised that the domain name would be perfect for Complainant to own. The fact that Respondent knew of Complainant’s famous mark at the time of registration also is evidence of Respondent’s bad faith registration.
Respondent’s bad faith is also shown by its demand for a selling “price well in excess of Respondent’s reasonable out-of-pocker expenses”. (Experian Information Solution, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans, WIPO Case No. D2002-0367, July 8, 2002)
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prevail in this proceeding and obtain transfer of the disputed domain name, the Complainant must prove per paragraphs 4(a)(i) through 4(a)(iii) of the Policy:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has exhibited copies of its TRIPLE CROWN service mark registrations on the United States principal register. These include service mark no. 0984679 dated May 21, 1974, in international class 042 for promoting the competitiveness of thoroughbred horse racing. Next there is a device plus words service mark registration no. 1479895 dated March 8, 1988, in international class 035 for nominating thoroughbred horses for races. And registration no. 1902003 dated June 27, 1995, in international class 041 is for a system of awarding prizes to thoroughbred horse owners.
The disputed domain name, <thetriplecrown.com>, is confusingly similar to the Complainant’s TRIPLE CROWN service mark. As the Complainant points out, it has long been established in decisions under the Policy that the article “the” does not influence an analysis under the Policy for identity or confusing similarity. (See.e.g., Vie de France Yamazaki Inc. v. Donna Sayada, Inc., WIPO Case No. D2000-1081, October 13, 2000; also Belo Corp. v. George Latimer, WIPO Case No. D2002-0329, May 16, 2002).
The Panel thus finds the Complainant has met its burden of proof in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends the Respondent has no legitimate rights or interests in the disputed domain name pursuant to paragraphs 4(c)(i-iii) of the Policy. That is to say, the Complainant contends the Respondent is not in bona fide offering goods and services per (4(c)(i)), is not commonly known by the disputed domain name ((4(c)(ii)), and is not making a non-commercial fair use of the disputed domain name per (4(c)(iii)). The Respondent is in default and thus has not attempted to show any legitimate rights or interests in the disputed domain name.
The Panel observes that the only use the Respondent is making of the disputed domain name is to try to sell it for $8,000. The Panel agrees with the Complainant that this is not a legitimate right or interest in the disputed domain under the Policy, and the Panel goes further and states that the Respondent’s use is best dealt with in the Bad Faith section of this decision.
C. Registered and Used in Bad Faith
The Respondent has for some time attempted to sell the disputed domain name on the Internet for $8,000 (Complaint Exhibits 1(g) and (h)). There is no evidence the Respondent ever tried to do anything else with the disputed domain name, so this appears to have been Respondent’s primary purpose when Respondent registered the disputed domain name. Obviously, $8,000 is much more than the Respondent paid for the disputed domain name when he registered it on April 29, 1999. This is a square-on violation of the bad faith provision of the Policy in paragraph 4(b)(i).
The Panel finds the Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy to show that the Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <thetriplecrown.com> be transferred to the Complainant.
Dennis A. Foster
Dated: March 21, 2006