WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association for Stock Car Auto Racing, Inc. v. R.H.P
Case No. D2007-1400
1. The Parties
The Complainant is National Association for Stock Car Auto Racing, Inc., Daytona Beach, Florida, United States of America, represented by Enns & Archer LLP, Winston-Salem, North Carolina, United States of America.
The Respondent is R.H.P, Hesperia, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2007. On September 24, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 24, 2007, Network Solutions, LLC 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2007.
The Center appointed William R. Towns as the sole panelist in this matter on November 12, 2007. 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.
4. Factual Background
The Complainant is a well known regulating, governing and sanctioning body for stock car automobile racing. The Complainant holds sixty-eight (68) United States federal registrations for the mark NASCAR, the earliest of which was issued by the United States Patent and Trademark Office (USPTO) in 1966. The Complainant has used in connection with stock car racing since as early as 1948. The Complainant also has registered its NASCAR mark in a number of other countries around the world, and has used and licensed its NASCAR mark extensively. The Complainant operates an official website at “”.
The Respondent initially registered the disputed domain name in March 1997. The Respondent uses the disputed domain name to direct Internet users to the Respondent’s “Mad Hungarian Sports Apparel & Collectibles” website, where, among other items, the Respondent offers for sale clothing items and merchandize (i.e. “collectibles”) related to the Complainant and its racing events and drivers. The Complainant holds registrations for the use of its NASCAR mark with clothing and other “collectibles”, but has not licensed or authorized the Respondent to use the NASCAR mark.
The Complainant first sent a cease and desist letter to the Respondent on or about April 10, 2001. After receiving no response, the Complainant again wrote to the Respondent on or about July 1, 2004, seeking to resolve the matter on an amicable basis. After again receiving no response, the Complainant sent another letter dated June 20, 2007, by Federal Express and by email. The letter was returned as undeliverable by Federal Express. Thereafter, the Complainant commenced this proceeding.
5. Parties’ Contentions
A. Complainant
The Complainant claims ownership of numerous registrations for the mark NASCAR in the United States and elsewhere, which the Complainant maintains it has used in connection since 1948 in connection with automobile racing events. According to the Complainant, the popularity of its racing events is unparalled. The Complainant states that these racing events, including the Nextel Cup Series and Winston Cup races, are nationally televised in the United States on network or cable channels and broadcast in over 150 different countries in at least 30 different languages.
The Complainant asserts that approximately seventy-five million people, or one of every three adults in the United States, consider themselves fans of the Complainant’s racing events. In addition, the Complainant’s “” website received approximately 100 million page views per month by nearly 4 million users, for a total of 1.2 billion page views annually.
The Complainant contends that its NASCAR marks are registered and used in connection with diverse goods and services, including all types of clothing and a wide variety of merchandize. The Complainant asserts that it has licensed the use of its NASCAR marks to over 200 different licensees, many of whom have exclusive licenses with the Complainant. According to the Complainant, sales of the Complainant’s licensed products have grown steadily, from $80 million in 1990 to $2 billion in 2006. Accordingly, the Complainant asserts that its NASCAR marks have acquired enormous goodwill and are substantial assets of the Complainant’s business.
The Complainant asserts that it has never licensed or otherwise authorized the Respondent to use its NASCAR mark. The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s mark, and that the Respondent is making an unauthorized use the domain name to offer clothing and other items bearing the NASCAR mark. The Complainant contends that the sale of such items by the Respondent does not give the Respondent a legitimate right to use the Complainant’s NASCAR mark in its domain name. Further, the Complainant maintains that the Respondent is not commonly known as “Nascar”.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant maintains that the Respondent clearly would have been aware of the Complainant’s NASCAR mark when the Respondent registered the disputed domain name, given the Complainant’s numerous prior registrations, the fame of the Complainant’s NASCAR mark, the extensive use of the Complainant’s mark, and the Complainant’s high profile presence in the retail market. According to the Complainant, the Respondent’s registered the disputed domain name, which incorporates the Complainant’s NASCAR mark in its entirety, in order to trade upon and profit from the enormous goodwill in the NASCAR mark. Further, the Complainant maintains that the Respondent intentionally is using the disputed domain name in bad faith to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 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 registered by the Respondent 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 are the sole remedies provided to a 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 the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, 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) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest 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 NASCAR mark, in which the Complainant unquestionably has established rights through registration and continuous and extensive use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Under paragraph 4(a)(i) of the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. Here, the disputed domain name incorporates the Complainant’s NASCAR mark in its entirety. The addition of the common or descriptive word “collectibles” does not dispel the confusing similarity with the Complainant’s mark. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
Accordingly, the Panel finds that 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, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s NASCAR mark, nor has it authorized the Respondent to register a domain name corresponding to that mark. Nor is there any indication that the Respondent has been commonly known by the disputed domain name. Further, the record reflects the Respondent’s registration and use of the disputed domain name, which is confusingly similar to the Complainant’s mark, to attract Internet users to a website where the Respondent offers for sale products relating to the Complainant or bearing the Complainant’s NASCAR mark.
The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to him of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 he 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.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name. Further, the Respondent’s clearly commercial use of the disputed domain name precludes any claim of a legitimate noncommercial or fair use of the domain name under paragraph 4(c)(iii) of the Policy. See Bata Brands S.�.r.l v. Charles Power,WIPO Case No. D2006-0191.
The Respondent’s offering for sale of what appear to be NASCAR products does not in the Panel’s view entitle the Respondent to intentionally register and use a domain name incorporating the Complainant’s NASCAR mark, particularly where the Respondent is also offering other products for sale. Under United States law, any right that a reseller of trademarked goods who is neither affiliated with nor authorized by the trademark owner may have to use the mark is carefully bounded by the requirement that a reseller not make use of the mark in a way that is likely to confuse consumers as to an affiliation between the trademark holder and the reseller. General Electric Company v. Japan, Inc.,WIPO Case No. D2001-0410. The use of a trademark as a domain name by an unauthorized and unaffiliated reseller goes further than what is required merely to resell the trademark owner’s products. Motorola v. NewGate Internet,WIPO Case No. D2000-0079. See also Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296.
A number of panels have rejected out of hand any right on the part of a reseller to register a domain name consisting of or containing the manufacturer’s trademark, at least in the absence of the trademark owner’s consent. See, e.g., Motorola, Inc. v. New Gate Internet, Inc.,WIPO Case No. D2000-0079; Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co.,WIPO Case No. D2000-0113. Even were this Panel to apply the standard first set forth in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 – a standard which has been applied only in situations involving authorized distributors – the Respondent would not have rights or legitimate interests in the disputed domain name. As the Oki Data Panel observed, the following circumstances must be present even for an authorized distributor in order for an offering of goods or services to be bona fide for purposes Paragraph 4(c)(i):
(i) Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774; Kanao v. J.W. Roberts Co., CPR Case No. 0109.
(ii) The site must accurately disclose the registrant’s relationship with the trademark owner. Houghton Mifflin Co. v. The Weatherman, Inc.,WIPO Case No. D2001-0211; R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201; Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344.
In this case, the Respondent does not sell only NASCAR branded goods on its website. Further, the Respondent has made no attempt to accurately disclose its relationship, or more accurately its lack of any relationship, with the Complainant. Thus, under any relevant and appropriate analysis under the Policy, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services with in the meaning of paragraph 4(c)(i) of the Policy. See Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809 (finding no legitimate interest in use of CHANEL as part of domain name leading to web site selling various types of perfume).
Accordingly, the Panel concludes that 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 documented out-of-pocket costs directly related to the domain name;
(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;
(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 intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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) 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 is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
A strong inference can be drawn from the circumstances of this case that the Respondent was well aware of the Complainant’s well-known NASCAR mark when it appropriated the Complainant’s mark for use in its domain name, and the Panel so finds. The Panel further finds that the Respondent registered and is using the disputed domain in an attempt to profit from and exploit the Complainant’s NASCAR mark. As noted in Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paula Ka v. Paula Korenek,WIPO Case No. D2003-0453.
The circumstances of this case as set forth above compel the conclusion that the Respondent registered and has used the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainants’ NASCAR mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. Pursuant to paragraph 4(b)(iv) of the Policy, this constitutes bad faith registration and use of the disputed domain name. See, e.g., Paula Ka v. Paula Korenek,WIPO Case No. D2003-0453; Bodegas Vega Sicilia, S.A. v. Seraf�n Rodr�gues Rodr�gues,WIPO Case No. D2001-1183; The Channel Tunnel Group Ltd. v. John Powell,WIPO Case No. D2000-0038; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: November 26, 2007
1 Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
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