The Complainant is Oaklawn Jockey Club, Inc. d/b/a Oaklawn Racing Casino Resort, United States of America (“United States” or “U.S.”), represented by Friday, Eldredge & Clark, LLP, United States of America.
The Respondent is Philip Pugh, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On July 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. The Respondent requested extension of time to submit a Response on July 29, 2019. The Center granted the automatic four calendar day extension for Response under paragraph 5(b) of the Rules on the same day rendering the due date for Response August 2, 2019. The Response was filed with the Center on August 2, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on August 15, 2019. 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.
The Panel issued an administrative procedural order on September 4, 2019. The Respondent was invited to provide evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, prior to any notice of the dispute. The Complainant was afforded an opportunity to respond. The Respondent’s supplemental submission was filed with the Center on September 9, 2019. The Complaint’s supplemental submission was filed with the Center on September 13, 2019. In view of the foregoing, the date for the Panel to submit its decision to the Center was extended to September 19, 2019. 4. Factual Background
The Complainant operates the Oaklawn Racing Casino Resort, in Hot Springs, Arkansas. Formerly known as the Oakland Park Race Track, the Complainant’s thoroughbred sports racetrack first opened in February 1904, and among other activities has hosted the Arkansas Derby since 1936.
The Complainant is the owner of United States Trademark registrations for the following marks:
OAKLAWN, U.S. Reg. No. 1,515,875, applied for January 19, 1988 and registered December 6, 1988 (first use 1904), for entertainment services including horse racing;
OAKLAWN ANYWHERE (word plus design), U.S. Reg. No. 4,726,413, applied for April 6, 2014 and registered April 28, 2015 (first use 2013), for entertainment services including horse racing and gambling activities;
OAKLAWN ANYWHERE, U.S. Reg. No. 4,726,411, applied for April 4 2014 and registered April 28, 2015 (first use 2013); for entertainment services including horse racing and gambling services;
OAKLAWN SINCE 1904 (word plus design), U.S. Reg. No. 3,594,185, applied for May 19, 2008 and registered March 24, 2009 (first use 2007); for entertainment services including horse racing and gambling activities;
OAKLAWN RACING GAMING SINCE 1904 (word plus design), U.S. Reg. No. 3,611,409, applied for May 19, 2008 and registered April 28, 2009 (first use 2008), for entertainment services including horse races and gambling services.1
The Respondent registered the disputed domain name on September 7, 2017. The disputed domain name resolves to parked page comprising pay-per-click (PPC) “related links” to other websites. Upon learning of the Respondent’s registration of the disputed domain name, the Complainant sent a notice letter to the Respondent by certified mail and email. After receiving no reply from the Respondent, the Complainant initiated this proceeding under the Policy. 5. Parties’ Contentions A. Complainant i. Complaint
The Complainant submits that the disputed domain name is confusingly similar the Complainant’s registered OAKLAWN and OAKLAWN-formative marks. In addition to registering the OAKLAWN word mark in 1988, the Complainant explains that the OAKLAWN word mark has been used exclusively since 1904 to advertise its services. The Complainant asserts that the OAKLAWN mark is recognizable in the disputed domain name, and that neither the descriptive term “sports” nor the Top-Level domain (“TLD”) “.com” negates the confusing similarity of the disputed domain name to the Complainant’s well-known mark. The Complainant contends that the confusing similarity of the disputed domain name to the Complainant’s OAKLAWN mark is heightened by the Respondent’s use of the word “sports”.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s OAKLAWN mark and has not been commonly known by the disputed domain name. The Complainant observes that the Respondent, since registering the disputed domain name has made no use of the disputed domain name other than with a parking page. According to the Complainant, the Respondent has neither used the disputed domain name in connection with a bona fide offering of goods and services nor made any legitimate noncommercial or other fair use of the disputed domain name. The Complainant emphasizes that the mere registration of a domain name does not create rights or legitimate interests in that domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the disputed domain name has been passively held by the Respondent for nearly two years without any active development of a website. The Complainant further observes that the Respondent sought to conceal his identity through use of a privacy/proxy service when registering the disputed domain name, and did not reply to the Complainant’s cease and desist letter. The Complainant maintains that the Respondent likely registered the disputed domain name with the intention of selling or transferring the disputed domain name to the Complainant in excess of the out-of-pocket costs related to the disputed domain name. In any event, the Complainant urges that in the circumstances of this case the Respondent’s passive holding of the disputed domain name supports a finding of bad faith.
The Complainant has been unable to obtain specific evidence that the Respondent registered the disputed domain name with the Complainant’s OAKLAWN mark in mind. Nevertheless, the Complainant points out that “Oaklawn” is not a commonly used English word, and notes that the Complainant’s OAKLAWN mark is distinctive and has been clearly associated with the sport of horseracing for many years. The Complainant also contends that the Respondent had constructive notice of the Complainant’s federally registered OAKLAWN mark, which predated the Respondent’s registration of the disputed domain name by some 20 years. ii. Complainant’s Supplemental Filing
The Complainant submits that the Respondent has failed to provide clear evidence of prior use or demonstrable preparations to use the disputed domain name for a podcast. According to the Complainant, the Respondent instead has submitted allegations unsupported other than a photograph allegedly depicting equipment purchased for use with a podcast. The Complainant maintains that the authenticity of the photograph is impossible to confirm, and that even assuming otherwise there is no demonstrated connection between the equipment and the Respondent’s alleged plan. The Complainant further contends there is no evidence that the equipment was purchased prior to the Respondent’s receiving notice of the dispute.
The Complainant further observes that the Respondent has not identified any of the sports leagues the Respondent claims to have contacted, or identified the podcast group he makes reference to. The Complainant reiterates that the Respondent has had over two years to develop content for a website and offered no explanation of the alleged setbacks referred to by the Respondent either in his response or supplemental submission. The Complainant maintains that the Respondent’s claims are merely self-serving, not inherently credible, and unsupported by any relevant pre-complaint evidence.2 B. Respondent i. Response
The Respondent states that he acquired the disputed domain name in July 2017 for use as housing for a podcast for sports leagues in the city of Oaklawn,Texas, which the Respondent describes as a suburb of Dallas, Texas. According to the Respondent, the podcast would be a means of bringing together information regarding tennis, volleyball, rugby, kickball and dodgeball leagues.
The Respondent explains that the podcast is still being planned. The Respondent attributes this to a “few setbacks”, but asserts he intends to have the podcast operational and would like to keep the disputed domain name. The Respondent submits that the disputed domain name is no way being used for anything negative, and wishes to keep the disputed domain name and to “reverse the domain name hijacking”. ii. Respondent’s Supplemental Filing
The Respondent states that there are 7 sports leagues whose presidents he has spoken with. The Respondent represents that after speaking with the league presidents he purchased the necessary podcast equipment. The Respondent insists he registered the disputed domain name only after he came up with the idea, and created an email address to be used with the podcast and website. The Respondent provides a photograph said to depict the podcast equipment he purchased after speaking with the league presidents.
The Respondent further maintains he is part of a podcast group that shares ideas and best practices, but that it took “longer than expected to plan the podcast and learn how to produce the podcast”. According to the Respondent, he is still trying to come up with an “outline for the program”. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s OAKLAWN mark, in which the Complainant has established rights through registration and long and extensive use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s OAKLAWN mark is clearly recognizable in the disputed domain name.4 The inclusion of the dictionary or descriptive word “sports” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. TLDs, in this case “.com”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s OAKLAWN mark; nor has the Respondent claimed to be commonly known by the disputed domain name. The Respondent notwithstanding registered the disputed domain name, which is confusingly similar to the Complainant’s OAKLAWN mark, and the Respondent’s sole use of the disputed domain name since then has been to host a parked page comprising PPC advertising links.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted earlier, the Respondent claims to have registered the disputed domain name for use with a podcast relating to sports leagues in Oak Lawn, a residential neighborhood in Dallas, Texas, U.S. As UDRP panels have consistently held, examples of use or demonstrable preparations to use a domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but rather should be inherently credible and supported by relevant pre-complaint evidence. See WIPO Overview 3.0, section 2.2 and cases cited therein.
The Panel concludes that the Respondent has not brought forward credible evidence of pre-Complaint preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent claims to have registered the disputed domain name after conceiving the idea for a podcast featuring sports leagues in the Oak Lawn neighborhood. The Respondent contends he spoke with the presidents of seven sports leagues (none of which the Respondent has identified). The Respondent states that after talking to the league presidents he purchased all of the podcast equipment he required. The Respondent further claims he is a member of a podcast group that shares ideas and best practices.
And yet, notwithstanding the foregoing, after more than two years the Respondent has failed to come forward with even a rudimentary plan to use the disputed domain as a host for a sports-related podcast unrelated to the Complainant’s OAKLAWN mark. Rather, the Respondent’s only use of the disputed domain name has been to host a parked page comprising PPC advertising links. The Panel accordingly concludes that the Respondent’s self-serving representations are not credible and not supported by relevant pre-Complaint evidence. The Panel also notes in passing that the Wikipedia entry on Oak Lawn does not include the word “sport”.
The Respondent has made no claim to have been commonly known by the disputed domain name, or to have acquired trademark or service mark rights in the disputed domain name. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name. In short, the Respondent has not come forward with evidence of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent registered a domain name in which the Complainant’s OAKLAWN mark is clearly recognizable. As noted earlier, the Respondent’s sole use the disputed domain name for more than two years has been to host a parked page comprising PPC advertising links. As discussed earlier, the record before the Panel casts significant doubt on the Respondent’s professed intention to use the disputed domain name with a sports-related podcast, particularly given the absence of any credible evidence of preparations to do so.
In addition, the Panel notes that the Complainant uses for their main website. The Panel notes from the Complainant’s website that the Complainant offers betting options in different sport games and sport events (in addition to bets related to horse racing).
Having regard to the totality of facts and circumstances in the record, the Panel considers it more likely than not that the Respondent was aware of the Complainant and its OAKLAWN mark when registering the disputed domain name. The Panel notes that in certain cases the composition of the domain name may permit the panel to draw an inference of bad faith registration; here, the particular formulation of the Complainant’s mark plus the addition of a term touching on its area of activity triggers just such an inference (cf. also WIPO Overview 3.0, section 2.5.1). The Panel concludes that the Respondent in all likelihood registered and is using the disputed domain name in bad faith by seeking to exploit or otherwise profit from the Complainant’s mark. The Panel further notes the Complainant’s use of a privacy protection service.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 18, 2019
1 The Complainant also has four pending applications before the United States Patent and Trademark Office (USPTO) for OAKLAWN and OAKLAWN RACING CASINO RESORT, for gambling services and resort hotel services.
2 The remainder of the Complainant’s supplemental filing is repetitive of arguments set out in the Complaint.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 .
4 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
5 SeeWIPO Overview 3.0 , sections 1.8 and 1.11.2 and cases cited therein.
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