Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Delaware Park Racing Association, 777 Delaware Park Boulevard, Wilmington, DE 19804, U.S.A. and is represented by William R. Denney, Esq., and James M. Kron, Esq. of Potter Anderson & Corroon LLP, Wilmington, DE, United States of America.

Respondent is Lew Blanck of Lew Blanck Sales, 554 South Eleventh, Reading, PA 19602, United States of America.

The domain names at issue are:

<delawarepark.com>

<delawarepark.net>

<delawarepark.org>

The registrar is Network Solutions, Inc. based in Herndon, Virginia, United States of America.

The WIPO Arbitration and Mediation Center (the Center) received Delaware Park Racing Association’s complaint on February 1, 2001, by e-mail and a hard copy on February 5, 2001. The Center verified that the complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Delaware Park Racing Association made the required payment to the Center. The formal date of the commencement of this administrative proceeding is February 16, 2001.

On February 7, 2001, the Center transmitted via e-mail to Network Solutions a request for registrar verification in connection with this case. On February 8, 2001, Network Solutions transmitted via e-mail to the Center Network Solutions Verification Response, confirming that the registrant is Lew Blank, and that the domain name registrations at issue are in "Active" status.

February 16, 2001, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via e-mail and post/courier to Lew Blank. There has been no response from the Respondent.

On March 14, 2001, the Center notified Respondent’s Default.

On April 3, 2001, the Center advised the parties via e-mail that Nicolas C. Ulmer (CH/USA) had been appointed as the sole panelist in this proceeding.

The Panel finds that WIPO has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore the Panel issues its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondent.

Complainant is a company involved in horse racing and gaming. Complainant holds the following Trade or Service Marks for "DELAWARE PARK":

Registration Number 2,334,385

Registration date: March 28, 2000

Description of Services: Retail shops, featuring souvenirs and gifts, in Class 35.

First Use in Commerce: 1987

Registration Number 2,334,386

Registration date: March 28, 2000

Description of Services: Wagering Services, in Class 36.

First Use in Commerce: 1937

Registration Number 2,334,387

Registration date: March 28, 2000

Description of Services: Restaurant Services, in Class 42.

First Use in Commerce: 1937

Registration Number 2,337,277

Registration date: April 4, 2000

Description of Services: Entertainment, Namely, conducting horse races and providing slots/video lottery facilities, in Class 41.

First Use in Commerce: 1937

The Respondent is an individual who according to the Registrar’s "Who is" data base may also do business as "Lew Blanck Sales".

According to the Complaint, which is largely supported by pertinent attachments of documents, relevant facts here include the following:

On February 4, 2000, Respondent sent an e-mail to Mr. Joseph Ferraro, then an officer of Complainant, stating that "[w]e have enabled www.delawarepark.com to forward to www.delpark.com. (Footnote 1) Try it". The e-mail also indicated that Mr. Ferraro’s e-mail address had been linked to receive forwarded messages from j.ferraro@delpark.com. Later that day, Respondent sent Mr. Ferraro another e-mail message offering to sell delawarepark.com to Complainant for US$ 5,000. "Who is" search results submitted by Complainant reveal that Respondent, on 4 February 2000, also registered delawarepark.net and delawarepark.org, the other two domain names at issue here. On March 10, 2000 Complainant’s lawyers sent a letter to Respondent demanding the immediate transfer of the three domain names. Respondent subsequently spoke with these lawyers by phone, again offering to sell the domain names, but no agreement was reached.

During and after this period the delawarepark.com domain name was variously linked to a "National Art" page address; was directed to a page "under construction"; and then from 31 January 2001 to Complainant’s own website. The other complained of domain names are linked to a website indicating that it is "under construction", and appear not to have been used or linked to any active internet addresses.

Complainant alleges and pleads that the above facts, and the further facts and arguments referred to in the discussion below, meet the requirements of Paragraph 4(a) of the Policy thereby requiring that the domain names at issue be transferred to Complainant. Respondent has filed no response of any kind, and is in default.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. That:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Complainant has here submitted a strong and substantiated complaint that readily meets its burden on all three points above. Respondent has defaulted and it is appropriate, under Paragraph 14 of the Rules, for the Panel to draw appropriate inferences from this default.

A. Similarity or Identity

The domain names at issue are essentially identical to the marks in which Complainant has rights.

B. Respondent’s Legitimate Interest in the Domain Names

There is no indication, evidence or inference in the file that Respondent has any rights or legitimate interest in the complained of domain names; in particular there is no evidence or reason to believe that Respondent falls within the legitimization criteria listed in, inter alia, Paragraph 4(c) of the Policy.

There is, on the other hand, significant uncontroverted evidence that Respondent has registered and used such domain names in bad faith (see below).

C. Bad Faith Registration and Use

Under Paragraph 4(b) of the Policy evidence of bad faith registration and use includes circumstances indicating that the domain name was registered for the purpose of resale to the trademark owner for profit. There is good uncontroverted evidence of such acts and motive here. The ".net" and ".org" names were not apparently directly offered for sale, but their registration on the very day that Respondent offered his initial ".com" site for sale is most certainly a circumstance indicating that they were registered for purpose of resale(Footnote 2), and this with knowledge of Complainant’s rights. It is, moreover, long established that the inactive or passive holding of a domain name can, under appropriate circumstances constitute bad faith "use" within the meaning of the Policy, see Telstra Corporation Ltd. v. Nuclear Marshmallows, Case N° D2000-0003, and its progeny. Such circumstances are present here.

Respondent’s somewhat bizarre pattern of linking his domain name to Complainant’s actual site and e-mail addresses was, presumably, an effort to draw Complainant’s attention, and perhaps irritation, to Respondent’s deliberately confusing website. It certainly does not demonstrate any good faith on the part of Respondent.

Complainant also points out that Respondent has previously been found to have registered and used a website in bad faith, and with the intention of confusing and diverting internet users. Infospace.com Inc. v. Registrar Administrator Lew Blanck, Case N° D2000-0069. It is not clear whether this is sufficient to constitute "a pattern of conduct ... to prevent other from obtaining a domain name" within the meaning of Paragraph 4(b) (ii) of the Policy. But it is not necessary to determine that point here, since the other evidence of Respondent’s bad faith registration and use, as adumbrated above, is clear and convincing.

For all the foregoing reasons, the Panel decides that: the domain names <Delawarepark.com>, <Delawarepark.net> and <Delawarepark.org> are: (a) identical or confusingly similar to the marks of Complainant; (b) that Respondent Lew Blanck has no rights or legitimate interest in those domain names; and (c) that Respondent Lew Blanck registered and used those domain names in bad faith.

Therefore the Panel, pursuant to paragraph 4(i) of the Policy, orders that the above domain names be transferred to Complainant, Delaware Park Racing Association.

Nicolas C. Ulmer
Sole Panelist

Dated: April 25, 2001

Footnotes:

1. Which is Complainant’s website.