Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Northwest Racing Associates Limited Partnership , Auburn, WA, USA ("Complainant"). The Respondent is QuantuMarketing, Seattle, WA, USA ("Respondent").

The domain name at issue is "emeralddowns.com" registered with Network Solutions.

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.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 30, 2000; The Forum received a hard copy of the Complaint on August 30, 2000.

On September 5, 2000 Network Solutions confirmed by e-mail to the Forum that the domain name "emeralddowns.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified t hat Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 26, 2000 by which Respondent could file a Response to the Complaint, was transmitted to R espondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@emeralddowns.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 3, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notic e to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, withou t the benefit of any Response from the Respondent.

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

A. Complainant

Respondent registered the domain name "emeralddowns.com", which is identical to Complainant’s trademark, in bad faith. Respondent has no rights or legitimate interest in the domain name, and is aware of Complainant’s rights in the Emerald Downs name. The Emerald Downs name is well known in the Seattle area, where Respondent does business. Upon registering the domain name, Respondent attempted to persuade Complainant to purchase web site development and hosting services from Respond ent in exchange for the domain name. Respondent should be required to transfer registration of the domain name "emeralddowns.com" to Complainant.

B. Respondent

Respondent submitted no response in this matter.

The evidence presented demonstrates the following facts. Complainant registered the Emerald Downs mark with an intent to use application, filed with the U.S. Patent and Trademark Office on August 2, 1995. Complainant has been using the Emerald Down s mark since 1996. The Emerald Downs mark was officially registered on January 21, 1997.

Respondent registered the domain name "emeralddowns.com" on July 1, 1998. Respondent is in the business of selling web site development and hosting services in the Seattle area. Respondent contacted Complainant and presented a web site design proposal, which included the transfer of the "emeralddowns.com" domain name in exchange for payment for web site development and hosting services.

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.

The domain name "emeralddowns.com" is confusingly similar to a mark in which Complainant has rights. Complainant’s evidence establishes that it is the holder of a federally registered service mark for Emerald Downs, which it has us ed in commerce since June 1996.

The domain name "emeralddowns.com" incorporates entirely Complainant’s mark and is therefore confusingly similar to Complainant’s mark. See Technology Properties, Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to the Complainant’s mark, RADIO SHACK).

A substantial number of UDRP decisions have indicated that the addition of a top-level domain will not prevent a finding that the domain name is confusingly similar if the second-level domain is comprised of Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the Complainant has rights in the registered marks, STATE FAIR OF TEXAS and TEXAS STATE FAIR and therefore, Respondent’s domain names STATEFAIROFTEXAS. COM" and "TEXASSTATEFAIR.COM" are identical to the Complainant’s mark, except for the addition of the domain name level designation "com").

Therefore, this panel finds, in accordance with ICANN Policy ¶ 4(a)(i), that the domain name "emeralddowns.com" is identical or confusingly similar to Complainant’s federally registered Emerald Downs service mark.

Complainant has alleged that Respondent has no rights or legitimate interest in the "emeralddowns.com" domain name. Respondent, who must carry the burden of proof regarding the establishment of rights or legitimate interest with re spect of the domain name, has submitted no response in this matter. Therefore, Complainant’s allegations that Respondent has no such rights are sufficient to warrant such a finding by this panel. See ICANN Rule 14(b) (this panel may draw appropriat e inferences from a Party’s failure to respond).

The evidence presented indicates that Respondent has not used or made preparations to use the domain name in a bona fide offering of goods or services. In addition, the evidence indicates that Respondent, who registered the domain name on July 1, 1998, has never used the domain name.

Therefore, this panel concludes, in accordance with ICANN Policy ¶ 4(a)(ii), that Respondent has no rights or legitimate interest in respect of the domain name.

Respondent’s registration and use of the "emeralddowns.com" domain name are in bad faith. At the time Respondent registered the domain name, it knew or should have known of Complainant’s rights in the Emerald Downs mark. That Respo ndent contacted Complainant in attempt to transfer the domain name for valuable consideration evidences bad faith. Respondent’s failure to do anything other than offer the domain name for sale is further evidence of bad faith.

If Complainant’s name was not entitled to trademark protection, Respondent’s conduct may not be in bad faith. See Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that Complainant failed to prove that Respondent had registered and used the domain name in bad faith where the Respondent is an Internet business which deals in selling or leasing descriptive/generic domain names). But that is not this case.

Instead, all the evidence presented indicates that Respondent knew or should have known of Complainant’s rights in the Emerald Downs mark. Respondent operates a business in the same geographic region as Complainant. See The Journal Newspapers, Inc. v. HI5 Information Services, Inc. FA 95394 (Nat. Arb. Forum September 25, 2000) (finding that Respondent knew or should have known of Complainant’s usage of the mark prior to Respondent’s registration of the domain name since, inter alia, Respo ndent is a business located within the potential circulation area of Complainant’s newspaper). Here, the domain name "is so obviously connected with the Complainant…that its very use by someone with no connection with Complainant suggests opportunist ic bad faith." Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)

Also, the evidence presented indicates that Respondent offered to transfer the domain name to Complainant for valuable consideration. See America Online, Inc. v. Netsbest, FA 93563 (Nat. Arb. Forum Mar. 29, 2000) (finding bad faith where the Respondent made no use of the domain name <icqguide.com> other than offering it for sale).

Finally, the fact that Respondent has been passively holding the "emeralddowns.com" domian name for over two years is evidence of bad faith. See Mondich & Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 200 0) (finding Respondent’s failure to use the domain name for a period of two years raises the inference of registration in bad faith).

Therefore, this panel concludes, in accordance with ICANN Policy ¶ 4(a)(iii), that the domain name has been registered and used in bad faith.

Having established all three elements required by the ICANN Policy, it is the decision of this Panel that the requested relief be granted.

Accordingly, it is ordered that the domain name "emeralddowns.com" be transferred from the Respondent to the Complainant.