WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Newman/Haas Racing v. Virtual Agents, Inc.
Case No. D2000-1688
1. The Parties
Complainant: Newman/Haas Racing
500 Tower Parkway
Lincolnshire, IL 60069
Respondent: Virtual Agents, Inc.
5835 Verdun Ave., Suite 202
Verdun, Quebec H4H 1M1
2. The Domain Name and Registrar
Domain Name: "newmanhaasracing.com"
Registrar: Network Solutions Inc. (NSI)
3. Procedural History
The Complaint was received by WIPO by email on December 5, 2000, and in hardcopy form on December 6, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that "newmanhaasracing.com" ("the Domain Name") was registered through NSI and that Virtual Agents, Inc is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On December 12, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was December 31, 2000. On December 20, 2000, a Request for Extension was received from the Respondent. WIPO responded to the request on December 21, 2000, and informed the Respondent that the last day for sending its Response was January 14, 2001. On January 13, 2001, the Response was received by WIPO by email.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the original date scheduled for the issuance of the Panelís decision was February 28, 2001.
On reading the papers the Panel decided to conduct a whois search to see what other domain names the Respondent holds. The NSI list stopped at 50 such names, which included a large number of names of racing teams featuring names such as Kodak, Tommy Hilfiger and Marlboro.
The Whois search not having been part of the Complaint, the Panel decided to issue a procedural order requiring the Respondent to produce a complete list of its 'racing' domain names and giving the Respondent an opportunity to produce documentary evidence of what preparations it has made to use those domain names.
The order was issued on February 26, 2001. It gave the Respondent 7 days to respond. A correspondence then ensued between WIPO and the Respondent. The Respondent claimed that it had been unable to locate Rule 12, the Rule pursuant to which the Procedural Order was issued. The Panel decided to extend the Respondent's time for responding to the order. The Respondent was given until March 13, 2001, to respond.
The Respondent's response appears below under Respondent's contentions. Suffice it to say that the Respondent did not produce a complete list of its 'racing' domain names as asked nor did it produce any documentary evidence to show what preparations it has made to use any of those domain names.
4. Factual Background
The Complainant has carried on business under the partnership name "Newman/Haas Racing" since 1983. The Complainant is very well known in the field of automobile racing.
The Complainantís official website is connected to the domain name "newman-haas.com", which it registered with NSI on December 11, 1997.
The Respondent registered the Domain Name on October 26, 1998.
On October 9, 2000, lawyers representing the Complainant wrote to the Respondent drawing the Respondentís attention to the Complainantís alleged rights in the name "Newman/Haas Racing" and the Complainantís concerns as to the consequence of any use that the Respondent might make of the Domain Name (i.e. confusion) and sought transfer of the Domain Name to the Complainant.
5. Partiesí Contentions
The Complainant draws attention to the facts set out above and further contends as follows.
The Complainant is one of the worldís best known entities in the field of automobile racing, and has participated in Championship Series races throughout the United States and internationally, capturing three series championships since the partnershipís creation. Complainant has spent a significant amount of money, time and resources on the advertising and marketing of the mark "Newman/Haas Racing."
Complainantís success in the field of automobile racing has translated into numerous sponsorships and licenses for different types of consumer goods, e.g. video games and apparel, the sale of which results in royalties being paid to Complainant.
Complainant participates in twenty to twenty-two automobile races per year, resulting in significant unsolicited print and electronic media coverage of the name Newman/Haas. Complainant also derives significant income from the name Newman/Haas as numerous corporate sponsors pay fees to Complainant to be associated with the name Newman/Haas.
Complainant has achieved a tremendous amount of goodwill as a result of the long and continuous use of its well-known name and therefore possesses extensive common law trademark rights in the name.
Respondent is not a licensee of Newman/Haas, nor is it authorized by Newman/Haas to use any Newman/Haas marks, including NEWMANHAASRACING.
On October 26, 1998, Respondent Virtual Agents registered the Domain Name, which is identical or confusingly similar to both Newman/Haasís common law trademark discussed above and Complainantís valid domain name: NEWMAN-HAAS.COM.
Respondent Virtual Agents has no rights or legitimate interests in the Domain Name.
Respondent Virtual Agents is not known (either as a business or other organization) by the name "newmanhaasracing.com".
Respondent is a classic example of a cybersquatter. In 1999, when Complainant was preparing to register a domain name for the partnership, Complainant entered "newmanhaasracing.com" into an Internet browser and found a website owned by Respondent advertising that domain name for sale.
Complainant contacted Respondent and Respondent offered to sell the domain name to Complainant for more than $2, 000.00.
Respondent was notified of Complainantís objection to Respondentís registration of "newmanhaasracing.com" in a letter dated October 9, 2000, and Respondent failed to respond to Complainant in any manner.
The Respondent contends (almost verbatim) as follows.
The Domain Name is not the same as Newman/Haas, we have had the name since October of 1998, and were contacted for the first time in October of 2000, by the attorneys of the complainant. This occurred two years after this name was registered, and only then did they decide that the name is similar. "newmanhaasracing.com" is not a Trade marked name by Newman/Haas. This being said, there are no trade mark violations with our name.
My legitimate interests in this name are as follows; I am a racing fan and have contemplated building a fan site (a legitimate non-commercial use of the Domain Name.)The name was not registered for the purpose of selling, renting or otherwise transferring the domain name registration to any third party.
The Domain Name has never been used, we have never derived any profit or attempted to derive any profit from the name. We have not disrupted the Complainantís business or prevented him from doing business and we have in no way tried to confuse or otherwise any Newman/Haas client. In such, we have not acted in bad faith.
In response to the Complainant Allegations, Newman/Haas Racing is not a Registered TradeMark.
On October 26,1998, we registered the Domain Name with the intent of building a not for profit fan site. We believe we have legitimate interest in the name since we are racing fans and our intentions were to promote interest in the Newman/Haas Racing Team and Motor Sports in general.
In the Complaint the Complainant states "Respondent Registered the Domain Name in Bad Faith". This is a Blatant Disregard for the truth. This name has never been advertised for sale in any way shape or form. The Complainant is basing his complaint on cyber squatting with this as the main fact. This is unfounded since the name has never been active.
In paragraph 29 of the Complaint it is said that the Complainant contacted us and the we offered to sell the Domain Name to the Complainant for more than
$2, 000.00, this statement is false. The Complainant has never contacted us, and we are not in the business of selling domain names. With all these unsubstantiated statements and false accusations we are having a problem with the credibility of the Complainant and his request for the transfer of the Domain Name.
In summation, we are appalled by the course of action taken by the Complainant and his Representative. We have been wrongfully accused of the following:
- Alleged-deriving profit with a trade mark name.
- Alleged operating a web site for profit.
- Alleged cyber squatting
- Alleged offering the Domain Name for sale.
All of these accusations are completely false and misleading, and in the case of the Complainant, completely necessary (sic), since we have in no way whatsoever done anything wrong. In light of these facts we do not believe that the Complainant has any right to the Domain Name whatsoever.
We also feel that there exists a very serious and blatant conflict of interest, which is in the fact that Mr. David Maher of Sonnenschein, Nath & Rosenthal, the Representative for the Complainant, who in fact executed the Complaint and picked the WIPO Domain Panelists, and certified to its accuracy, is himself a WIPO Domain Panelist. We do not know or understand how a WIPO Panelist can be given the opportunity to pick fellow WIPO Panelists to represent his own complaint. On January 12, 2001, as a courtesy, I called Mr. Maher to ask him about this conflict and he rather abruptly hung up the phone on me. I do not believe this is the fashion, or the intent, of having a "neutral panel" arbitrating domain name disputes.
In light of this fact, we feel that this Complaint should be dismissed immediately. We also think it prudent that Mr. Maher be dismissed of his duties on the WIPO Panel for not disclosing his position as a WIPO Panelist. Not only has Mr. Maher tarnished his own reputation, but also that of WIPO. If this matter is not resolved satisfactorily we will have no choice but to make light of this flagrant conflict of interest to the Illinois Bar Association of which Mr. Maher is a member, and all other convening authorities.
The Respondent's response to the Procedural Order reads as follows:
"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. As we have previously stated, we have registered these Domain Names to create a racing fan site including all types of motor sports. We are doing this as a hobby, on our own time and money, therefore, time to completion has no set date. Since you have already done the WHOIS Search, we do not think it necessary to re-list the names we have registered. (If you do not have a complete list, we will be happy to supply one.) At this point in time we cannot comprehend how this case has gotten so far off track. We thought that this should have been an open and shut case since Mr. David Maher who represents the Complainant, and is a WIPO Panelist, has made false declarations against us which cannot be substantiated, and of which we have requested proof and have not received. That we have used this name for monetary gain, and have actually had communications with him about this before he filed this Complaint. ALL FALSE! We also feel the fact that Mr. Maher did not disclose that he is a WIPO Panelist, and that there are no rules pertaining to "Conflict of Interest" in the WIPO Arbitration Rules, leaves the organization open to perceived conflicts of interest and biased rulings.
We would also like to state for the record that, we have co-operated fully with all aspects of Panel requests, and have honored all deadlines. We have done no wrong in any way shape or form and have not broken any Laws in any country, and the only reason this Panel is looking at this case is because of the less than truthful complaint sworn to by Mr. David Maher, WIPO Panelist, because without that, there is no case."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Before dealing with the Complaint proper, the Panel needs to address the Respondentís argument that the Complaint be dismissed because of the behavior of the Complainantís representative. The behavior complained of is first that the Complaint contains false unsupported allegations against the Respondent and secondly that the Complainantís representative did not disclose that he is a WIPO panelist himself.
As to the first of those points, much depends upon whether the allegations are false and whether the Complainantís representative knew them to be false. As will be seen below, the Panel finds itself unable to decide whether or not one of the allegations is false, but finds that most of the other allegations were justified. Certainly, there is absolutely no evidence to suggest that the Complainantís representative has behaved in any way improperly.
As to the second point, it is the fact that many panelists (including all the members of this Panel) from time to time represent parties to complaints under the Policy. There is nothing reprehensible or unusual in this. In many jurisdictions practicing counsel from time to time are asked to sit as deputy judges. Indeed, in the case of WIPO panelists they are required to demonstrate experience in the field in order to qualify for appointment. In the case of most people that experience is derived from acting for parties to these disputes. So long as the members of the Panel are truly independent of the parties to the Complaint in hand, neither party is disadvantaged. All three members of this panel have filed declarations as to their independence.
As to the constitution of a three-member panel, the Rules permit each party to put forward nominations for one panelist and WIPO appoints the presiding panelist. That is what has happened here. One panelist has been drawn from those nominated by the Complainant, one has been drawn from those nominated by the Respondent and the presiding panelist has been selected by WIPO. The process has been an entirely open one.
In light of the foregoing, the Panel finds no impropriety on the part of the Complainantís representative and declines to dismiss the Complaint on the back of that allegation.
Identical or confusing similarity
The Domain Name comprises two elements, namely the Complainantís trading name and the generic Ď.comí suffix.
While it is true that the Complainantís trading name is not a registered trade mark, the Policy is not restricted to registered rights and the Panel finds that the Complainant has unregistered common law trade mark rights in its trading name.
The Panel finds that the Domain Name is identical to a trademark or service mark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
While the overall obligation to prove the elements of paragraph 4(a) of the Policy rests on the shoulders of the Complainant, proving 4(a)(ii) of the Policy involves proving a negative. The interaction between paragraphs 4(a)(ii) and 4(c) mean that the obligation is on the Complainant to make out a prima facie case and that that having been done, it is for the Respondent to demonstrate the contrary.
The Domain Name being the Complainantís well-known name and the Complainant not having granted the Respondent a license to use the Complainantís name, the prima facie case is made out.
The sole justification put forward by the Respondent for selecting the Domain Name is that the Respondent is an automobile racing enthusiast. If that on its own were enough, no name would be sacrosanct.
Paragraph 4(c) of the Policy identifies a number of circumstances, which, if proved to apply, will demonstrate the Respondentís rights or legitimate interests in respect of the Domain Name. Those circumstances include the Respondent being known by the relevant name or conducting a bona fide business under the name etc. The list is not exhaustive and it would of course include situations where the Respondent has been licensed by the Complainant to use the name. A legitimate interest can also be shown by producing evidence of the preparations one has made to make bona fide use of the Domain Name. The Respondent has put forward nothing of that kind to demonstrate any such rights or legitimate interest and notwithstanding the opportunity expressly provided by the procedural order.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainantís case is that the Domain Name is the Complainantís name, that the Respondent has no rights to it and that the Respondent has sought to sell it from an early stage for a sum in excess of the Complainantís out of pocket expenses.
The first of those elements is paragraph 4(a)(i) of the Policy, the second is paragraph 4(a)(ii) of the Policy. The first two elements on their own are generally not enough to constitute bad faith. The third, in combination with the first two, results in a powerful argument in favor of bad faith registration and use under paragraph 4(a)(iii) of the Policy (see paragraph 4(b)(i) of the Policy).
What is the strength of the evidence against the Respondent regarding the offer for sale? The Complaint refers to a website in 1999, owned by the Respondent on which the Domain Name was advertised for sale. The Panel has been shown no print out of the webpage in question. All that the Panel has is the bare assertion. The Complaint also refers to a subsequent offer for sale by the Respondent when the Respondent is alleged to have offered the Domain Name to the Complainant for $2, 000.00 Again, there is no documentary support (direct or indirect) for that assertion.
The Respondent deals with these assertions by firmly denying them. It is utterly impossible for the Panel to resolve direct conflicts of this kind in the absence of some documentary support and without being able to see the demeanor of the witnesses. The burden of proof is on the Complainant. Accordingly, the Panel has to resolve the doubt in favor of the Respondent and ignores the alleged offers for sale.
However, the Whois search conducted by the Panel unearthed a large number of other domain names registered by the Respondent featuring the names of racing teams. As indicated above that search stopped at 50 names, many of which were of the racing team variety. There are more. The Panel does not know how many more. In any event the list comprises a far larger number of domain names in that category than one would expect to find in the hands of an amateur racing enthusiast.
Even in the absence of an offer to sell a domain name, the Policy provides that the registration of a domain name "to prevent the owner of the trademark . . . from reflecting the mark in a corresponding domain name" is bad faith if the registrant has 'engaged in a pattern of such conduct.' Paragraph. 4(b)(ii) of the Policy. Here, the Respondent has registered numerous domain names incorporating famous trademarks, and despite a specific request from the Panel, the Respondent has provided no information concerning its right to use those domain names or any evidence of any preparations whatsoever to use any of these names. In these circumstances, the registration and non-use of so many domain names incorporating famous marks compels the Panel to conclude that the Respondent is a cybersquatter, and registered the Domain Name to prevent the Complainant from doing so.
The Panel finds that the Domain Name was registered and is being used in bad faith.
In the result, the Panel having found that the Domain Name is identical to a trade mark/service mark in which the Complainant has unregistered rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name "newmanhaasracing.com", be transferred to the Complainant.
David H Bernstein
Jacques A. Léger, Q.C.
Dated: March 29, 2001