Complainant is Churchill Downs Incorporated of Louisville, Kentucky, United States of America (“United States” or “U.S.”), represented by Dinsmore & Shohl LLP, United States of America.
Respondent is Leonard Manley, Jalapeno Ventures of Charlestown, Saint Kitts and Nevis / Domain Privacy Group (aka Domain Privacy Service FBO Registrant) of Burlington, Massachusetts, United States. 2. The Domain Name and Registrar
The disputed domain names , and are registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2015. On October 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names and . On October 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint adding the disputed domain name to the dispute on October 14, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On October 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 6, 2015.
The Center appointed Eduardo Machado as the sole panelist in this matter on November 13, 2015. 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
Complainant is the owner of numerous registered trademarks for the KENTUCKY DERBY and TWINSPIRES marks, registered in the United States, in the state of Kentucky, and in various other jurisdictions. The TWINSPIRES mark has been used in commerce since at least as early as March 2007 (U.S. Registration No. 3,454,766, registered on June 24, 2008); and the KENTUCKY DERBY mark has been in use in commerce since as early as 1875 (U.S. Registration No. 997,385, registered on November 5, 1974).
Complainant is also the owner of several domain names encompassing its registered marks.
The Kentucky Derby is one of the most famous thoroughbred horse races in the world.
Complainant maintains websites to provide customers with information about the famous Kentucky Derby horseracing and related services at its websites, found at “”, “”, and elsewhere. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name creates confusion as an obvious typosquat of the TWINSPIRES mark.
The disputed domain names and create confusion by incorporating Complainant’s KENTUCKY DERBY trademark in its entirety, along with the words “betting” and “odds”, closely associated with the activities conducted in conjunction with Complainant’s services.
The United States federal trademark registrations for KENTUCKY DERBY and TWINSPIRES include an extensive list of goods and services, including without limitation services related to horseracing, entertainment services, and wagering services for horseracing.
Respondent’s inclusion of the word “betting” in one of the disputed domain names is intended to divert consumers searching for information about the services provided in connection with the KENTUCKY DERBY and TWINSPIRES marks.
The inclusion of additional generic words associated with the goods and services of Complainant does not prevent or reduce the confusion created by the remainder of the disputed domain names, and may, in fact, increase the confusion.
In addition to the obvious use of Complainant’s trademarks, both the “” (to which “www.” previously redirected) and the “www.” websites also create confusion by directly copying sections of text from Complainant’s websites and using those sections on Respondent’s websites.
Complainant’s use and registration of its TWINSPIRES and KENTUCKY DERBY trademarks predate Respondent’s registration of the disputed domain names.
Complainant contends that the registration of is not based on any legitimate interests, but rather is a clear attempt to redirect consumers through typosquatting using Complainant’s TWINSPIRES mark.
Complainant similarly believes that the registration and use of the disputed domain names is an attempt to use the trademark rights of Complainant to redirect consumers to Respondent’s websites in order to capitalize on the goodwill of Complainant.
Complainant asserts that Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant has no relationship with Respondent and has not given Respondent any permission to use its TWINSPIRES or KENTUCKY DERBY trademarks, or to apply for any domain names incorporating Complainant’s marks.
Complainant argues that Respondent has registered and used the disputed domain names in bad faith.
Complainant also alleges that Respondent registered the disputed domain names in an effort to capitalize from the misdirected traffic resulting from those seeking information about the goods and services offered under the TWINSPIRES and KENTUCKY DERBY marks.
Complainant states that the use of an intentional misspelling of Complainant’s mark in the domain is also clear evidence of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
As a preliminary procedural matter, the Panel notes that Complainant in its amended Complaint named, in addition to Leonard Manley, Jalapeno Ventures, another Respondent on the basis that this third-party was an “alter ego” of the named Respondent. Noting that the Registrar has confirmed Leonard Manley, Jalapeno Ventures as the registrant behind the privacy service for all three disputed domain names and that the record is not very developed otherwise in this regard, the Panel declines to name this third party as a Respondent in this decision. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name creates confusion with Complainant’s TWINSPIRES mark.
The Panel finds that the disputed domain names and also create confusion by incorporating Complainant’s KENTUCKY DERBY mark in its entirety, along with descriptive words, i.e., “ betting” and “odds”, closely associated with Complainant’s services.
The Panel agrees that the inclusion of generic words does not prevent or reduce the confusion created and may, in fact, increase the confusion. See e.g., Hallmark Licensing, LLC v. Domain Hostmaster, Whois Privacy Services Pty Ltd. / DN Manager, Whois-Privacy.Net Ltd,WIPO Case No. D2014-1644 (noting that the inclusion of words associated with the goods, or features associated with the goods, of Complainant “does not affect the confusion created by the rest of the domain name and the Complainant’s trademark”).
Moreover, the Panel finds that the inclusion of the generic Top-Level Domains (“gTLDs”) “.info” and “.com” in the disputed domain names does not affect a finding of confusing similarity. Prior UDRP panels have repeatedly held that gTLDs such as “.org”, “.net” or “.com” do not affect a domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name).
The Panel finds that Complainant has proven that the disputed domain names are confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests
The Panel finds that Complainant’s use and registration of its TWINSPIRES and KENTUCKY DERBY trademarks predate Respondent’s registration of the disputed domain names.
Based on the uncontested information provided in the case file, it is clear that the registration of the disputed domain name is not based on any legitimate interests, being a clear attempt to redirect consumers through typosquatting using Complainant’s TWINSPIRES mark.
Likewise, the Panel notes that the registration and use of and are an attempt to use the trademark rights of Complainant to redirect consumers to Respondent’s websites in order to capitalize on the goodwill of Complainant.
The Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant has no relationship with Respondent and has not given Respondent any permission whatsoever to use its TWINSPIRES or KENTUCKY DERBY trademarks, or to apply for any domain names incorporating Complainant’s marks.
The Panel finds that Complainant has proven that Respondents do not have any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered the disputed domain names in an effort to capitalize from the misdirected traffic resulting from those seeking information about the goods and services offered under the TWINSPIRES and KENTUCKY DERBY marks.
The Panel finds that until Complainant contacted the owner of the US Racing website, the disputed domain name redirected to that site. In this sense, the Panel also notes that the US Racing site offers directly competing horserace wagering services.
Based on the uncontested information provided by Complainant, the Panel finds that the disputed domain names and redirected Internet users to websites which copy certain sections of text directly from Complainant’s websites and are, or have in the past been, linked with US Racing’s and/or other competing websites.
The Panel also finds that the use of an intentional misspelling of Complainant’s mark in is evidence of bad faith. See ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 (stating, “It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”)
The Panel finds that Complainant has proven that Respondent has registered and used the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to Complainant.
Eduardo Machado
Sole Panelist
Date: December 1, 2015
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