WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Chestnutt v. Jennifer Tumminelli
Case No. D2000-1758
1. The Parties
Complainant is Robert Chestnutt, a resident of Valencia, California (USA), represented by Cynthia A. R. Woollacott of Woollacott Jannol Fields L.L.P., Los Angeles, California (USA), (the Complainant).
Respondent is Jennifer Tumminelli, a resident of Tiburon, California (USA)(the Respondent).
2. The Domain Name and Registrar
The domain name at issue is . (the Domain Name). The registrar is Network Solutions, Inc., of Herndon, Virginia (USA) (the Registrar).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant�s complaint on December 19, 2000 (electronic version) and December 20, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirement 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). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is December 29, 2000.
On December 21, 2000, the Center transmitted, via email to the Registrar, a request for registrar verification in connection with this case. On December 27, 2000, the Registrar transmitted, via email to the Center, its verification response, confirming that the Respondent Jennifer Tuminelli is the registrant, that the administrative contact is Jennifer Tumminelli, and that the technical contact is WorldNIC Name Host (HOST-ORG).
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on December 29, 2000, the Center transmitted to the Respondent Notification of Complaint and Commencement of the Administrative Proceeding via post/courier and e-mail. The postal address used for Respondent was as follows:
Jennifer Tuminelli
11 Greenwood Cove Drive
Tiburon, California 94920 (USA)
Respondent did not submit a response by January 17, 2001, the deadline indicated in the Center's notice. However, on January 18, 2001, Respondent sent an e-mail communication to the Center, stating that power outages in California had caused her computer to crash, and requesting "a few days" to respond. The Center received the Response on January 25, 2001 (e-mail) and subsequently in hard copy. (Footnote 1)
On January 23, 2001, in view of the Complainant�s designation of a single panelist (but without prejudice to any election to be made by the Respondent) the Center invited Richard G. Lyon to serve as a panelist.
Having received on January 24, 2001, Mr. Lyon�s Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel. The Projected Decision Date was February 8, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
On January 26, 2001, Complainant informed the Center that it would be submitting in hardcopy five (5) additional annexes. (Footnote 2) According to Complainant these annexes "are necessary due to representations made by Respondent in the Response." Treating this communication as a request for a supplemental submission, (Footnote 3) by order dated January 29, 2001, the Panel denied Complainant's application.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the evidence presented, the Policy, the Rules, and Supplemental Rules.
4. Factual Background
Complainant is an individual who owns the United States registered trademark RACEGIRL for various types of clothing and clothing accessories, in class 25. The mark was first used in commerce in 1996. Although not alleged in the Complaint, he apparently operates a website at go at which certain items of women's clothing with an auto racing theme are offered for sale. (Footnote 4)
Respondent is a professional racecar driver who competes in the American Le Mans Series. She acquired the website in 1998 and the Domain Name in August 2000. The website at is under construction. There is no evidence of any actual use of that website.
Complainant alleges that he demanded that Respondent cease and desist from use of the Domain Name, and that Respondent refused. Respondent asserts that these "demands" were made in repeated telephone calls, to her home on weekends, to her mobile telephone, and to her superior at work. She characterizes these telephone calls as "harassment" and "malicious."
5. Parties� Contentions
Complainant.
The Complaint consists almost entirely of Complainant's desired legal conclusions. The only specific factual allegations are registration and ownership of the RACEGIRL trademark and marketing of RACEGIRL branded clothing at motor sports events. Complainant contends that the Respondent has acquired the Domain Name, which is identical to his registered trademark; that Respondent "began conducting business using the name 'RACEGIRL' in 2000;" that "Respondent's use of the name [RACEGIRL] through advertising and marketing of goods and services has caused and is likely to cause confusion among consumers as to the origin of Respondent's products;" that Respondent's use of the Domain Name constitutes infringement of his trademark; that his mark is famous and is being diluted by Respondent's use of the Domain Name; and that the Domain Name was registered and is being used in bad faith. Complainant does not identify Respondent's goods and services or "business," offers no factual basis for his claim that his mark is famous, and (beyond the conclusionary assertions of infringement and dilution) offers no evidence of bad faith.
Respondent
Respondent claims a legitimate right to use the Domain Name as descriptive of her and her profession. She denies that she has used or intends to use the Domain Name for any commercial purpose; rather, she acquired the Domain Name as an "educational" site to promote women as racecar drivers. (Footnote 5) She points out that Complainant's trademark is limited to clothing and clothing accessories and that the term racegirl has many uses outside that category. In light of this, Respondent denies any likelihood of confusion or bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name is registered by the Respondent is identical to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect to the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
While identity with Complainant's trademark is obvious, Complainant has plainly failed to carry his burden of proof with respect to the latter two items.
A. Legitimate Interest
Although Complainant has not licensed or otherwise authorized Respondent to use its trademark in any manner, his rights to a descriptive term such as racegirl are limited to the class of goods for which the mark was issued. There is no evidence that Respondent has used the term for clothing (racing related or otherwise) or indeed for any product or service at all, and thus no evidence of consumer confusion or diversion of business. Even if the Panel were to accept Complainant's naked assertion of his mark's being famous, (Footnote 6) there is no evidence of dilution. The term racegirl is as descriptive of Respondent as it is of Complainant's products. On the record before the Panel, Respondent has established a legitimate interest in the Domain Name.
B. Bad Faith
The lack of any evidence of use of the Domain Name to divert business or for any other purpose prohibited by the Rules requires the Panel to conclude this issue in favor of Respondent. Complainant's allegations of trademark infringement and dilution are just that � allegations, with no proof offered. (Footnote 7) Furthermore, Respondent has affirmatively stated that she has never offered the Domain Name or any other domain name for sale, that she conducted a search of possible conflicting uses of racegirl prior to applying for the Domain Name, and that the only other domain name she owns is the one incorporating her own name. The only bad faith shown on the record is the filing of the Complaint.
7. Decision
For the foregoing reasons, the Panel orders the Complaint dismissed.
Richard G. Lyon
Sole Panelist
Dated: February 2, 2001
Footnotes:The Panel in its discretion allows the late filing of the Response.The revised schedule of annexes to the Complaint proposed by Complainant are:Claimant's federal trademark registration dated 11 April 2000 for "Racegirl."Claimant's attorney's cease and desist letter of 28 August 2000.Claimant's attorney's follow up letter dated 8 September 2000.Claimant's "go" home page.Respondent's "" home page.The Rules provide only for a Complaint and Response, with additional submissions upon request of the Panel (see Rule 12). See Response, pp. 6-7.As noted, the site was only identified as "under construction" when reviewed by the Panel on February 1, 2001. Respondent states (Response, p. 6) that the site has "never been uploaded or in operation." (emphasis in original)In fact the Panel believes this allegation to be baseless.The only one of the additional appendices offered by Complainant (see fn.2, supra) that might contain evidence, rather than legal conclusions, is a copy of Respondent's home page, which the Sole Panelist has reviewed independently.
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