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State Fair of Texas v. Granbury.com [2000] GENDND 1072 (12 September 2000)

National Arbitration Forum

AMENDED DECISION

State Fair of Texas v. Granbury.com

Claim Number: FA0007000095288

PARTIES

The Complainant is State Fair of Texas, Dallas, TX, USA ("Complainant"). The Respondent is Granbury.com, Granbury, TX, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "BIGTEX.NET", registered with Network Solutions Inc ("NSI").

PANELIST(s)

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Panelist is Judge Karl V. Fink (Retired).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/25/2000; The Forum received a hard copy of the Complaint on 07/25/2000.

On 07/26/2000, NSI confirmed by e-mail to The Forum that the domain name "BIGTEX.NET" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 08/01/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/21/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail. It was also emailed to postmaster@bigtex.net.

A Response was filed by Respondent.

On August 23, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Judge Karl V. Fink (Retired) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIESí CONTENTIONS

A. Complainant

Complainant began using the mark BIG TEX in 1952 following the construction of the 52 foot tall cowboy character ("BIG TEX") that talks and waves, serving as the official ambassador of the State Fair greeting visitors at the main entrance of the fairgrounds.
The service mark BIG TEX was registered (Reg. No. 1,551,364) with the United States Patent Office on August 8, 1989 by the Complainant.
BIG TEX is immediately recognized by the public as a service mark for high quality services relating to exhibitions featuring home, farm, business and industrial products as well as educational and entertainment services.
Respondent has always been known as Granbury.com, Inc.
Respondent registered the disputed domain name Bigtex.net on June 26, 1998.
Respondentís use of the mark BIG TEX in the domain name Bigtex.net is a bad faith and willful appropriation of Complainantís mark in an attempt to confuse consumers, to trade upon Complainantís goodwill and reputation, and to hi-jack and redirect consumers attempting to reach the Complainant.
On March 23, 1999 the Complainant received a letter from an attorney for Respondent, proposing to assign the disputed domain name to Complainant for a total of $15,000. In the letter it was alleged that the expenses associated with the registration of Bigtex.net totaled approximately $6,000 and Respondent requested an additional $9,000 for the assignment.
The domain name Bigtex.net is virtually identical to BIG TEX. The only minor differences are the use of "net" and the removal of all spaces in the domain name.
Respondent has not acquired any right to use the disputed domain name because the service mark BIG TEX is owned by the State Fair of Texas.
The only apparent reason to use BIG TEX as part of a domain name is to benefit from the goodwill associated with the mark BIG TEX. The use of anotherís well know or famous trademark as a domain name does not constitute a bonafide offering of goods or services.
The Respondent has not been commonly known by the disputed domain name and its use of anotherís well known or famous trademark as a domain name is a deceptive use of a trademark that creates a customer confusion and delusion of the mark.
Respondentís misleading use of the mark BIG TEX is the type of conduct ICANN UDNDRP is meant to prevent.

B. Respondent

Granbury.com, Inc. is an internet service provided located in Granbury, Texas. It provides internet access for Granbury, Texas and its surrounding counties. The Respondent registered Bigtex.net on June 26, 1998, seven months after Bigtex.com was registered by Complainant. Complainant had a reasonable time to register the domain name in dispute.
The registration of the domain name was to enhance service to Respondentís customers and it was a key point in its original business plan.
Respondent has legitimate interests in the domain name. In June 1998 a graphic artist was hired to design logos and stationary. July 31, 1998 Respondent received the assumed name Bigtex.net in Tarrant County, Texas seven months before their first notification from the State Fair of Texas. Other activity was also taken including purchasing a full page advertisement in the Yellow Pages phone book for $1,500 on November 13, 1998.
The nickname "BIG TEX" has been associated with the State of Texas long before the State Fair of Texas erected its 1952 cowboy. There are 73 other companies that have Big Tex in their name.
Respondent attempted to sell the domain name for a reasonable sum that would defray the expenses already incurred by Respondent and it would provide some reasonable value for the goodwill that had been created in the domain name.
Respondent planned to use the domain name in its business.
Respondent does not claim any affiliation with the Complainant.

FINDINGS

Complainant began using the mark BIG TEX in 1952.
The service mark BIG TEX was registered (Reg. No. 1,551,364) with the United States Patent Office on August 8, 1999 by the Complainant
Respondentís use of the mark BIG TEX in the domain name Bigtex.net is a bad faith and willful appropriation of Complainantís mark in an attempt to confuse consumers, to trade upon Complainantís goodwill and reputation, and to hi-jack and redirect consumers attempting to reach the Complainant.
Respondent has not acquired any right to use the disputed domain name because the service mark BIG TEX is owned by the State Fair of Texas.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The domain name Bigtex.net is virtually identical to BIG TEX. The differences are the use of ".net" and the removal of all spaces which are not of significance. See Visit America, Inc. v. Visit America, FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (stating that ".com" is part of the Internet address and does not add source identity significance.)

Complainant has met its burden of proving this element.

Rights or Legitimate Interests

Respondent has no rights or legitimate interest in the domain name.

The service mark BIG TEX has been owned by the State Fair of Texas since 1952. Until Respondent began to plan to use the assumed name "Bigtex.net" in 1998 it had no connection with the name. Respondent had never commonly been known by the disputed name. The fact that it made preparations and expenditures to use the domain name containing the mark of Complainant does not give it any rights or legitimate interests in the domain name under the ICANN policy

Complainant has met its burden of proving this element.

Registration and Use in Bad Faith

Respondent has registered and used the name in bad faith. Respondent has intentionally attempted to attract for commercial gain Internet users to Respondentís web site or other on-line location by creating a likelihood of confusion with the Complainantís mark as to the source sponsorship affiliation or endorsement of Respondentís website or location or of a product or service on Respondentís web site or location.

The only apparent reason to use BIG TEX as part of a domain name is to benefit from the goodwill associated with the mark BIG TEX. The use of anotherís well know or famous trademark as a domain name does not constitute a bonafide offering of goods or services.

The Respondent has not been commonly known by the disputed domain name and its use of anotherís well known or famous trademark as a domain name is a deceptive use of a trademark that creates customer confusion and delusion of the mark.

Complainant has met its burden of proving this element.

DECISION

The undersigned directs that the domain name Bigtex.net be transferred to Complainant, State Fair of Texas.

Judge Karl V. Fink (Retired)
Dated: September 12, 2000

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