Domain name - Domain Name Dispute Resolution Policy - Service mark - Trademark -Identical - Confusingly similar - Legitimate interests - Bad faith registration - Bad faith use

Complainant was registered owner of trademark, Hambletonian, and of service mark, Breeders Crown.  Respondent registered domain names hambletonian.com and breederscrown.com.  Complainant alleged that Respondent’s domain names were identical to its marks, Respondent had no legitimate interests with respect to the names, and that Respondent registered and used the names in bad faith.

Held, Names Transferred to Complainant

Complainant must establish bad faith registration and use, and that the Respondent has no legitimate interests in the domain name at issue.

The registered domain names are identical and confusingly similar to the marks of Complainant.

Complainant has continuously used its registered marks and has spent substantial amounts of money promoting it.  As a result, Complainant and these marks have achieved a strong reputation.  Respondent registered the domain names as redirection sites to its own products and services, which are unrelated to Complainant’s services.  This redirection began long after the use and registration of the marks by Complainant.  This shows bad faith use by Respondent.

Respondent does not have legitimate interests in respect to the domain names in that they are being used to misleadingly divert consumers.  Respondent as intentionally attempted to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with Complainant’s marks.  This shows bad faith use.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Condon, Panelist: -

The above entitled matter came on for an administrative hearing on March14, 2000, before the undersigned arbitrator in accordance with Rule 3(b)(I) of ICANN's Uniform Domain Name Dispute Resolution Policy and Rules. The arbitrator certifies that he has no conflict of interest in this matter. After due consideration of the written record as submitted, the following decision is made:

PROCEDURAL FINDINGS
Domain Name: Hambletonian.com
Breederscrown.com
Domain Registrant: Images Marketing Group Date: March 10, 1998
Domain Registrar: Network Solutions, Inc.

This action was commenced by the Complainant's filing its complaint with the National Arbitration Forum (The Forum) on February 11, 2000. Thereafter, following a compliance review made in accordance with ICANN Rule 4, all necessary parties were duly notified of the commencement of the administrative proceedings. Respondent was advised that it would be considered in default if it failed to respond within 20 days of receiving the Complaint. The Respondent was advised of the consequences of default and also that the last day for sending his response to the claimant and The Forum was March 6, 2000.

FINDINGS OF FACT 
By virtue of the Respondent's failing to respond it is now in default and the allegations of the Complaint are deemed to be true, to wit:

(1) The Complainant received a certificate of registration from the United States Patent and Trademark Office (USPTO) for the trademark "Hambletonian" (and Design) on November 5, 1996. Since 1957, Claimant has continuously used the service mark "Hambletonin" in connection with the sale of entertainment services in the nature of an annual harness race for three year old standard bred horses. The "Hambletonian" trademark has also been used in its advertising and promotional materials as well as T-shirts, sweatshirts, polo shirts etc, since August 5, 1995.

(2) On April 11, 1995, the USPTO issued Complainant a certificate of registration for the service mark "Hambletonian" for use in connection with its harness race for three year old standard bred horses.

(3) Since August 1984, Complainant has continuously used the service mark 
"Breeders Crown" in connection with the sale of entertainment services in the 
nature of organizing and conducting a series of championship harness racing 
competitions. On April 14, 1992, the USPTO issued Complainant a certificate
of registration for the service mark "Breeders Crown". 

(4) On May 26, 1992, the USPTO issued Complainant a certificate of registration 
for the service mark "Breeders Crown" (and Design) which has been used in 
connection with its championship harness racing competitions.

(5) Since their introduction, the "Hambletonian" (and Design), "Hambletonian", 
"Breeders Crown" (and Design), and "Breeders Crown" marks (collectively, 
the "Marks") have been seen by many people in the United States; and, 
Complainant has spent substantial funds in promoting and using those Marks. 
As a result, the Complainant and these Marks have acquired a strong reputa-
tion and generated valuable good will among consumers.

(6) Respondent, Images Marketing Group, whose principal place of business is in Amsterdam, Netherlands, registered the domain names "hambletonian.com" and "breederscrown.com" with Network Solutions, Inc. on March 10, 1998.
Respondent used the domain names as redirection sites to "sport.com", which 
is totally unrelated to harness racing and the types of goods and services 
offered by the Complainant and with which the Marks have come to be 
associated.

(7) Respondent did not start using the domain names as a redirection site until 
March 10, 1998, much later than the use and registration of Complainant's
Marks.

CONCLUSION 
(1) The registered domain names are identical to or confusingly similar to the Marks in which the Complainant has rights.

(2) The Respondent does not have legitimate interests in respect to the domain
names which are the subject of the Complaint in that they are being used to
misleadingly divert consumers. 

(3) The Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web sites or other on-line locations , by creating a likelihood of confusion with the Complainant's Marks as to the source, sponsorship, affiliation or endorsement of Respondent's web site location.

DECISION
After carefully reviewing the submittals, it appears that the Respondent has acted in bad faith and, therefore, the domain names should be transferred to the Complainant.