WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daily Racing Form LLC v. na and Virtual Dates, Inc.
Case No. D2001-1032
1. The Parties
1.1 The Complainant is Daily Racing Form LLC, an entity having its principal place of business at 100 Broadway, New York, New York, United States of America.
1.2 The Respondents are na and Virtual Dates, Inc. na gives an address at box 4357 Boynton Beach, Florida, United States of America. Virtual Dates, Inc. gives an address at 6292 Windlass Circle, Boynton Beach, Florida, United States of America. The registrar's records show na as the registrant of the domain name at issue. Virtual Dates, Inc. filed the Response and claims to be the registrant of the domain name at issue.
2. The Domain Name and Registrar
The domain name at issue is , which domain name is registered with D.
3. Procedural History
3.1 A Complaint was submitted electronically to the WIPO Center on August 15, 2001, and the signed original together with four copies forwarded by express courier was received on August 17, 2001. The WIPO Center sent an Acknowledgment of Receipt to the Complainant, dated August 19, 2001.
3.2 On August 21, 2001, D confirmed by e-mail that the domain name at issue is registered with D, is currently in active status, and that the Respondent na is the current registrant of the domain name. The registrar also forwarded the requested Whois details, and confirmed that the UDRP Policy is in effect. The Whois details showed a different address and a different contact person from those indicated in the Complaint. The WIPO Center transmitted a copy of the Complaint to na in care of the contact person at the address as listed in the Registrar's Whois details.
3.3 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules, as the WIPO Center transmitted the Complaint to the address listed in the Registrar's Whois records and since Virtual Dates, Inc. responded to the Complaint. The required fees for a one-member Panel were paid on time and in the required amount by the Complainant.
3.4 No formal deficiencies having been recorded, on August 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, D and ICANN), setting a deadline of September 11, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent�s participation in these proceedings.
3.5 By email on August 24, 2001, an agent of Virtual Dates, Inc. contacted the WIPO Center and advised the WIPO Center that Virtual Dates, Inc. was the actual registrant of the domain name at issue.
3.6 On August 27, 2001, the WIPO Center contacted the registrar and requested current information regarding the domain name. The registrar confirmed the original information that the name was registered by na, giving R Schwartz as the contact name. By email of August 28, 2001, the WIPO Center advised Virtual Dates, Inc. of the determination of the registrar.
3.7 On August 28, 2001, the WIPO Center received an amendment to the Complaint, which dealt with the question of mutual jurisdiction, and added nothing substantive to the Complaint's allegations.
3.8 On September 10, 2001, the WIPO Center received a Response filed on behalf of Virtual Dates, Inc. Virtual Dates, Inc., attached as Annex A to the Response Whois information that showed na as the registrant, and offered this as evidence that Virtual Dates, Inc. was the proper registrant of the domain name at issue. The Respondent requested a three-person panel and submitted the fees therefor in the required amount.
3.9 On September 12, 2001, the WIPO Center transmitted to the parties an Acknowledgment of Receipt (Response).
3.10 On September 13, 2001, Complainant submitted a request for permission to file a Reply to the Response and enclosed the Response therewith. By email of September 14, 2001, the WIPO Center advised the Complainant that its request would be forward to the Panel once it had been appointed.
3.11 On September 17, 2001, the Respondent submitted a request for permission to file an Affidavit of Respondent addressing matters included in Complainant's Reply to the Response. On the same date Complainant submitted a letter in Response to the Affidavit of Respondent.
3.12 On October 4, 2001, the WIPO Center sent a Notification of Panel Appointment, appointing Richard W. Page, Esq., Dana Haviland, Esq. and Scott Donahey, Esq., to act as panelists in this case, with Scott Donahey to act as presiding panelist.
4. Factual Background
4.1 Complainant's predecessor first registered the mark DAILY RACING FORM with the United States Patent and Trademark Office ("USPTO") in connection with a daily newspaper on October 30, 1906, showing a first use in commerce on November 17, 1894. (Complaint, Annex A.)
4.2 The Daily Racing Form has been the only daily publication in the United States dedicated to the coverage of a single sport, that sport being thoroughbred horse racing. For 107 years, the Daily Racing Form has published 364 days per year, the exception being Christmas days. Over 15 million copies are sold annually. The Daily Racing Form is such a fixture at racetracks around the United States that it has been referred to as "The Bible of Horse Racing."
4.3 Complainant also maintains a web site at which visitors can review editorial coverage of horse racing, purchase and download the past performance lines of horses, and manipulate those lines with Complainant's proprietary software program. Between 1999 and 2001, Complainant was the registrant of the domain name at issue. In 2001, Complainant inadvertently allowed the registration to lapse.
4.4 Complainant's publication is commonly referred to as the "Racing Form." This is well known to those connected with the sport of thoroughbred horse racing, and Complainant documented this fact with numerous such written references. (Complaint, Annex C.)
4.5 Respondent na registered the domain name at issue on July 5, 2001.
4.6 Respondent uses the domain name at issue to link to a web site entitled "Unreal Racing," which depicts thoroughbred horse racing, and states, "Welcome to the World's First Premium Online Interactive Horse Racing Game." (Response, Annex B.) Respondent reports that this web site is maintained by a third party.
4.7 Based on a prior Whois search conducted by Complainant (Complaint, Annex F), Complainant wrote a cease and desist letter to a Richard Jones in Santa Monica, California. The letter was returned as undeliverable because there was no such street number.
5. Parties� Contentions
5.1 Complainant contends that Respondent has registered a domain name that is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that Complainant has no registered trademark RACING FORM, but only has registered the trademark DAILY RACING FORM, that Respondent is using the domain name at issue to link to a web site at which virtual horse racing is occurring and that this both constitutes a legitimate interest in respect of the domain name and a good faith use.
6. Discussion and Findings
The Panel must first decide whether to accept the various submissions of the parties which are not called for under the Rules: Complainant's Reply, Respondent's Affidavit addressing various issues raised in Complainant's Reply, and Complainant's letter responding to the Affidavit of Respondent.
Paragraph 12 of the Uniform Rules discusses further statements as follows: "In addition to the Complaint and the Response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." In the present case, the Panel made no such request. The procedure was designed to lead to an expeditious result. Allowing the parties to file pleadings that are not called for under the Rules defeats the intent of a streamlined procedure and should be discouraged. The Panel adopts the reasoning of the Panel in Easyjet Airline Co., Ltd. v. Steggles, WIPO Case No. D2000-0024 that unsolicited pleadings are disfavored. Accordingly, the Panel declines to accept the additional submissions proffered by the parties, and the Panel will not consider them in arriving at its decision.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable."
Since both the Complainant and Respondent are domiciled in the United States, and since United States� courts have extensive experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith.
We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. There is no dispute that Complainant has rights in the DAILY RACING FORM mark. However, Respondent argues that Complainant has no rights in a RACING FORM trademark. Even were this contention true, it does not follow that Respondent's domain name, , is not confusingly similar to Complainant's DAILY RACING FORM mark. Trademark law has developed to protect the public as to confusion as to the source of goods or services. The question is would the relevant public be confused as to whether Complainant is connected with the domain name . Complainant has produced abundant evidence that the relevant public commonly refers to Complainant's publication by the name "Racing Form." (Complaint, Annex C.) Moreover, prior Panel decisions have held that where a domain name incorporates the dominant portion of a mark, the domain name is confusingly similar to the mark. Media West-GSI, Inc. v. Macafee, WIPO Case No. D2000-1032 (in which was found to be identical to the common law mark BASEBALL WEEKLY derived from the registered mark USA TODAY BASEBALL WEEKLY); Dreamworks L.L.C. v. Grantics, WIPO Case No. D2000-1269 (in which was found to be confusingly similar to the trademark THE LEGEND OF BAGGER VANCE).
Moreover, the Panel believes that the overwhelming public identification of Complainant's publication as the "Racing Form" creates common law trademark rights in the mark RACING FORM on behalf of Complainant. Norac Co., Inc. v. Occidental Petroleum Corp., 197 U.S.P.Q. 306, 315 (T.T.A.B. 1977). Accordingly, the Panel finds that the domain name at issue is confusingly similar to a mark in which Complainant has rights.
Respondent effectively argues that it has rights or legitimate interests in respect of the domain name because, before it had any notice of the dispute, it had been using the domain name in connection with a bona fide offering of goods or services. Policy, � 4(c)(i). The Panel does not agree. The domain name is being used to link to a web site at which virtual horse racing is conducted. This is intended to confuse the user that the web site is somehow connected to Complainant. Where the domain name is being used in this fashion, the use is in bad faith and cannot be bona fide. American Media Operations, Inc. v. Erik Simons, eResolution Case No. AF-134.
Complainant offers under its mark a publication and web site that dispenses information and news regarding thoroughbred horseracing. The Panel finds that Respondent's conduct in using a domain name confusingly similar to Complainant's mark to link to a web site where virtual horse racing games are offered constitutes a use of the domain name to intentionally attempt to attract, for commercial gain, users to an on-line location by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the location and the services there. Policy, � 4(b)(iv). This is bad faith registration and use under the Policy.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name be transferred to the Complainant.
M. Scott Donahey
Presiding Panelist
Richard W. Page
Panelist
Dana Haviland
Panelist
Dated: November 6, 2001
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