WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

National Association for Stock Car Auto Racing, Inc. v. Imaging Solutions

Case No. D2001-0777

 

1. The Parties

Complainant is National Association for Stock Car Auto Racing, Inc. ("NASCAR"), 3500 One First Union Center, 301 South College Street, Charlotte, NC 28202, USA.

Respondent is Imaging Solutions ("IS"), 903 NW Pinelake Drive, Stuart, FL 34994, USA.

 

2. Domain Name and Registrar

The domain name in issue is: <officialnascar.com> (the "Domain Name").

The registrar is Network Solutions, Inc. ("NSI"), 505 Huntmar Park Drive, Herndon, VA 20170, USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received NASCARís Complaint by e-mail on June 12, 2001, and in hard copy on June 15, 2001. The Center verified that the Complaint satisfies 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"). NASCAR made the required payment to the Center. The formal date of the commencement of this administrative proceeding is June 20, 2001.

On June 14, 2001, the Center transmitted via e-mail to NSI a request for registrar verification in connection with this case. On June 20, 2001, NSI transmitted via e-mail to the Center NSIís Verification Response, confirming that (1) the registrant of the <officialnascar.com> domain name is IS; (2) the administrative and billing contact is "Walker, Susan"; the technical contact is "Verio Inc."; and (3) the domain name registration in issue is in "Active" status and NSIís 5 Service Agreement is in effect.

On June 20, 2001, the Center transmitted the Notification of Complaint and Commencement of the Administrative Proceeding, together with copies of the Complaint, via e-mail and fax with copy by courier (FedEx) to IS, care of each of the contacts listed by NSI. The Center advised that the Response was due by July 9, 2001, pointed out that the Response should be in accordance with the specified rules, and described the consequences of a default if the Response was not sent by that date. The Center noted also that NASCAR had elected for a single-member Panel to decide this matter and informed IS of the option to select a three-person Panel instead.

No Response was received from IS or its representatives, either by the July 9, 2001, deadline or at any other time.

On July 10, 2001, the Center transmitted to IS, via e-mail, a Notification of Respondent Default. The Center advised the Respondent (a) that IS had failed to comply with the deadline for submission of its response and (b) the consequences of default, including that (1) a single-member Panel would be appointed (the number requested by Complainant); (2) the Panel would be informed of the default and would decide in its sole discretion whether to consider a response if submitted later; and (3) the Center would continue to send all case-related materials to IS.

On July 30, 2001, the Center advised the parties (1) of the appointment of Michael Albert, the undersigned, as the Panelist in this case; and (2) absent exceptional circumstances, the decision was to be forwarded by the Panel to the Center by August 13, 2001.

 

4. Factual Background; Partiesí Contentions

(a) The Trademarks

This Complaint centers on NASCARís alleged ownership of rights to the famous mark NASCAR which Complainant claims to have used since at least 1948. Complainant also alleges that several of its marks contain the words "Official" and "NASCAR" in close proximity.

NASCAR has provided the Panel with copies of several of its asserted trademarks as well as evidence of thirty-seven trademark registrations and sixteen pending applications, all incorporating the NASCAR mark. Complainant also avers that it has registrations or applications for trademarks in thirty-seven countries worldwide. NASCAR asserts that several of its registrations have attained incontestable status.

Complainant is the regulating and sanctioning body for the stock car automobile racing industry. The evidence it has submitted indicates that its races enjoy widespread popularity. Complainant first established an Internet presence that sought to capitalize on stock car racing enthusiasm in December 1995, when it first registered <nascar.com>. It launched its website in December 1999, and attests that it generates significant revenues from its Internet site, in large part because of its trademark.

Respondent owns no known trademarks that include the term "NASCAR" and has provided the Panel with no information about its business.

(b) Jurisdictional Basis

This dispute is within the scope of the Policy, and the Administrative Panel has jurisdiction to decide the dispute. A copy of the NSI registration agreement is appended as Annex B to the Complaint.

(c) The Complaint

Complainant alleges the following facts, and further supports these factual assertions with the affidavit of Complainantís authorized representative, Karen Leetzow, Esq., which is attached as Annex E to the Complaint:

That NASCAR enjoys a significant and profitable on-line presence.

That NASCAR refers to its website as its official site, as well as the "official online store" selling "officially licensed merchandise and collectibles."

That Complainant has established "Official Status Sponsorship" relationships with third parties who pay premium fees for the special status.

That NASCARís various trademarks have "acquired enormous goodwill and have become substantial assets" of its business.

That Complainant has never granted any official status to Respondent nor has Respondent ever received authorization to use any NASCAR marks.

That NASCAR first became aware of ISís registration of <officialnascar.com> in early 2000 and that Complainant sought unsuccessfully to negotiate its transfer.

That Respondent has made several uses of the <officialnascar.com> domain name, including as a website used for direct commercial advertising, as a means of redirecting Internet traffic to other advertising sites, and as a publicly inaccessible, password-protected site.

That Respondent is paid by third party advertisers on the basis of the traffic its website receives.

That in January 2001, Respondent offered to sell the domain name to NASCAR for $500 (five hundred U.S. dollars), which is more than the cost of registering and/or transferring it.

That in March 2001, IS informed Complainant that IS intended to offer the <officialnascar.com> domain name for sale on the auction website eBay.

NASCAR accordingly alleges that the domain name <officialnascar.com> is confusingly similar to Complainantís mark because it includes NASCARís federally-registered mark and misleadingly implies that ISís website enjoys official sanction from NASCAR; that Respondent has no rights or legitimate interests with respect to the Domain Name because IS conducts no business remotely related to stock car racing and because NASCAR owns exclusive rights in its marks; and that Respondent registered and used the Domain Name in bad faith by seeking to capitalize on the goodwill associated with the NASCAR mark to achieve financial benefit. IS knew or should have known that Complainant owned the NASCAR mark, and inclusion of that mark in the Domain Name represented a deliberate effort to attract consumers to its website on the basis of the trademark. Respondent created a likelihood of confusion with Complainantís mark and exploited that confusion to draw consumers to a commercially-oriented website. Finally, Complainant asserts that Respondentís efforts to sell the domain name to Complainant and its threats to auction the site on eBay represent an attempt to profit by selling a domain name and as such constitute conclusive evidence of bad faith. NASCAR adds that Respondentís disclaimer to the effect that it was not affiliated with NASCAR did not cure the initial interest confusion that IS generated nor the bad-faith nature of its conduct.

(d) Response

As noted above, Respondent has provided no Response, although the deadline for so doing expired on July 9, 2001. Accordingly, Respondent is in default. Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for the Complainant. Rather, under the Policy and the Rules, it remains the Complainantís burden to establish to the Panel that each of the three criteria for a transfer of a domain name or other remedy has been met. Under Rules, Paragraph 14, the effect of a default is that the Panel shall proceed to a decision and shall draw such inferences from the default as it deems appropriate.

 

5. Discussion and Findings

Accordingly, the Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response (or lack thereof), the Policy, the Rules, and applicable authority, which in the Panelís view, given that this dispute involves a domain name registered in the United States and given that both parties appear to be U.S.-based, shall include applicable principles of U.S. trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name in issue, each of the following:

(i) The Domain Name in issue is identical or confusingly similar to NASCARís trademark in issue here; and

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

(iii) The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances of acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests to the Domain Name for purposes of Paragraph 4(a)(ii) above.

(A) Effect of the Default

In this case, the Panel finds that, as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by the Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent IS has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to any notice of the dispute, being commonly known by the Domain Name, or making legitimate non-commercial or fair use of the Domain Name.

In the absence of any contrary statement or evidence, and in light of the sworn testimony of Complainantís affiant, Ms. Leetzow, and the other evidence of record, the Panel finds Ms. Leetzowís affidavit testimony to be credible and entitled to weight as discussed in relevant part below.

(B) Complainantís Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant NASCAR has proven that it owns trademark rights in the term "NASCAR" dating back to 1948 and that it has possessed a registered trademark since 1966. Several of its trademarks, including that of the term "NASCAR," have gained incontestable status under Section 15 of the United States Trademark Act, see 15 U.S.C. ß 1065. These marks enjoy presumptive validity and provide conclusive evidence of Complainantís exclusive right to use them. Id. Furthermore, Respondent does not contend that "NASCAR" is merely generic or descriptive.

NASCAR has also demonstrated that the domain name <officialnascar.com> is confusingly similar to the trademark it owns in the term "NASCAR." The NASCAR mark clearly dominates in the string "officialnascar" and the presence of the word "official" does nothing to distinguish the Domain Name from Complainantís mark. See In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985) (holding that a dominant feature in a name deserves greater weight in determining the likelihood of confusion). If anything, reference to the word "official" suggests that the website enjoys a connection to Complainantís business, if not outright status as an Official Sponsor. Complainant has successfully established the likelihood of confusion prong of its burden.

(ii) Whether Respondent Has Rights Or Legitimate Interest In the Domain Name

No evidence of record establishes any rights of Respondent in the Domain Name. IS has offered no evidence, and none appears of record, that it has any prior history of using the mark NASCAR, or the Domain Name, in connection with its business or for any other purpose. Because Respondent has failed to reply to NASCARís Complaint, the Panel is left with no evidence to rebut, and accordingly accepts, Complainantís plausible contention that IS has no rights or legitimate interest either in the term "NASCAR" or in the Domain Name <officialnascar.com>. Complainantís longstanding registrations support this finding.

(iii) Registration and Use in Bad Faith

Complainantís third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . or to a competitor of that complainant, for valuable consideration in excess of [registrantís] documented out-of-pocket costs directly related to the domain name."

NASCAR has shown this type of bad faith. IS offered to sell the Domain Name to NASCAR for $500, see Leetzow Decl., ∂ 18, and subsequently threatened to auction it on eBay. Id., ∂ 19. Complainant, to be sure, has proffered no evidence of what it would cost to register, maintain, and transfer a domain name; instead, it offers the conclusory assertion that those costs were less than $500. Additionally, Complainant cites cases that generally involve sums of money far greater than $500, e.g., Cream Pie Club v. Brittany Halford, NAF Case No. FA0007000095235 (August 17, 2000) (finding that an offer to sell domain name for $125,000 amounts to bad faith). The Panel is prepared to take notice, however, that prevailing rates for registration of a domain name through NSI at the time of Respondentís registration, as well as the fees for transfering a domain name (should transfer costs be relevant), were collectively less than $500. Absent evidence from Respondent of costs relating to the Domain Name in excess of this sum, the Panel is satisfied that the first illustrative example of bad faith is present here. Additionally, Respondentís offer to sell a domain name to the highest bidder, as the evidence shows Respondent either did or at least threatened to do through the Internet-based auction service eBay, betrays a clear motive to extract the maximum available profit from the Domain Name, which also comports with the first illustration of bad faith in Paragraph 4(b) of the Policy.

The second illustration of bad faith in the Policy occurs when a registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Complainant has made no allegation that it has been unable to use the trademark in a domain name, nor does NASCAR allege any pattern of improper registrations by IS. Accordingly, the Panel does not find this illustration applicable here.

The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." There exists no evidence that IS competes with NASCAR in any way and as such the "competitive disruption" illustration lacks relevance.

Finally, the fourth illustration concerns intentional attraction of Internet users to Respondentís site for commercial gain by exploiting the likelihood of confusion between Complainantís mark and Respondentís domain name. NASCAR has demonstrated that Respondent has engaged in such commercial exploitation - initially by posting banner advertisements on its site and later by redirecting web traffic to the <rockwaves.com> commercial site. Complainant has already established the likelihood of confusion between the Domain Name and the NASCAR mark. By placing banner advertising on its site, Respondent clearly evinced its commercial purposes. The Panel finds that Respondent capitalized on the confusion of Internet users drawn by the official-sounding NASCAR-related Domain Name to expose them to commercial advertising that is not approved by, and has no genuine affiliation with, NASCAR. That conduct constitutes bad faith.

Next, far from curing this abuse by removing the banners, Respondent worsened the problem by redirecting website traffic to the Rockwaves site. Both case law and prior arbitral findings have held that misdirecting or redirecting Internet users can constitute bad faith, e.g., Geocities v. Geociites.com, WIPO Case No. D2000-0326 (June 19, 2000). The Lanham Act, as well, forbids the sort of bait-and-switch redirection at issue here, barring activity designed "to divert consumers . . . to a site accessible under the domain name that could harm the goodwill represented by the mark . . . for commercial gain . . . by creating a likelihood of confusion." 15 U.S.C. 1125 (d)(B)(i)(V). Sending unwitting Internet users to a commercial site unrelated to NASCAR by use of the Domain Name constitutes exploitation of the confusing similarity between the Domain Name and the mark for commercial gain, constituting bad faith.

Complainant has therefore established all three prongs of its Complaint. As an ancillary matter, Respondentís disclaimer of affiliation with NASCAR cannot cure the initial confusion it generated through its domain name. See The New York Times Company v. New York Internet Services, WIPO Case. No. D2000-1072 (December 5, 2000). It was the initial interest of consumers that Respondent sought to exploit. That effect has already occurred by the time any disclaimer may be seen. Nor does the fact that the web site associated with the Domain Name is now password-protected render it innocuous or rehabilitate Respondentís bad faith. The standard set out in Ingersoll-Rand Co. v. Frank Gully, WIPO Case No. D2000-0021 (March 9, 2000) is that ceasing the misuse "cannot alter the fact that the bad faith act had occurred during the period following registration." This policy seems sound; otherwise, trademark owners could be held hostage to bad-faith registrants who temporarily alter their usage during the pendency of a UDRP proceeding. To be sure, this standard has its limits; the Panel does not presume that any one-time or accidental misuse would be fatal to a registrantís rights. But in the present situation, Respondent engaged in consistent and multiple bad-faith use of the Domain Name and must therefore relinquish it.

 

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that NASCAR has met its burden of proving that: (1) the Domain Name is confusingly similar to the NASCAR mark; (2) Registrant IS has no rights and no legitimate interest in respect of the Domain Name; and (3) the Domain Name has been registered and is being used by IS in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel requires that the registration of the <officialnascar.com> domain name be transferred to NASCAR.

 


 

Michael A. Albert
Sole Panelist

Dated: August 13, 2001