WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr.
Case No. D2001-1338
1. The Parties
The Complainant is the National Association for Stock Car Auto Racing, Inc., a Florida corporation with offices at 1801 West International Speedway Blvd., Daytona Beach, Florida 32114, U.S.A. The Complainant is represented by Elizabeth Pasquine, Esq., Kilpatrick Stockton LLP, 11130 Sunrise Valley Drive, Suite 300, Reston, Virginia 20191-4329, U.S.A.
The Respondent is David Crawford Jr., an individual whose address is 22 Foster Road, Milford, New Hampshire 03055, U.S.A.
2. The Domain Names and Registrar
The six (6) domain names in dispute are: <nascargames.com>, <nascargames.net>, <nascar-games.com>, <nascar-games.net>, <nascarinteractive.com> and <nascartvchannel.com>.
The registrar for the disputed domain names is Network Solutions Incorporated (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on November 9, 2001, by e-mail and on November 13, 2001, in hard copy. On November 16, 2001, the Center requested that the registrar NSI check and report back on the registrant for the six (6) disputed domain names, <nascargames.com>, <nascargames.net>, <nascar-games.com>, <nascar-games.net>, <nascarinteractive.com> and <nascartvchannel.com>. On November 19, 2001, NSI reported to the Center that the registrant was the Respondent, David Crawford Jr.
On November 22, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and e-mail and this proceeding officially began. Respondent's Response was received by e-mail on December 10, 2001, and in hard copy on December 14, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on January 7, 2002, and the Center proceeded to appoint the Panel on January 8, 2002.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by January 22, 2002.
4. Factual Background
The Complainant describes itself as "the world's premier regulating, governing and sanctioning body for stock car automobile racing." In this capacity, the Complainant lends its name and backing to several thousand car races per year all over the United States.
The Respondent is an individual who owns an array of Internet activities. The Respondent registered or re-registered the disputed domain names during October 2001, and uses them in conjunction with Internet games related to car races.
Both parties affirm there were some telephone exchanges in mid-2001, during which Complainant asserted trademark rights. Respondent followed up with an e-mail dated July 18, 2001 (Complaint Annex I), in which he proposed collaborating with the Complainant, but no agreement was reached.
In this proceeding the Complainant now is seeking transfer of the six (6) disputed domain names.
5. The Parties' Contentions
Complainant's Summarized Contentions:
-- Complainant is the world's premier regulating and sanctioning body for stock car racing. Each year it sanctions over 2,200 races in 13 divisions on 128 tracks in 40 states across the United States.
-- Complainant's racing events are the number one spectator sport in the United States.
-- Most if not all of Complainant's Winston Cup series racing events are nationally televised or broadcast via radio. NASCAR's television ratings are second only to the National Football League for sporting events.
-- Complainant has used its NASCAR mark in connection with stock car racing since at least 1948.
-- Complainant registered its<nascar.com> domain name on December 28, 1995. The website at <nascar.com> was launched on December 7, 1999, and features car game racing and a tv section.
-- Complainant licenses use of its marks to more than two hundred different licensees for such diverse goods and services as automotive products, television shows, clothing, bottled water, key chains, video games and restaurant services.
-- Over its long years of extensive use, Complainant's NASCAR trademarks have acquired enormous goodwill and have become substantial assets of Complainant's business.
-- Complainant has never authorized Respondent or his predecessor to use the NASCAR marks.
-- The games on Respondent's website are very similar to the fantasy games featured on Complainant's website (Complaint Annex J).
-- There is also a link on Respondent's website to a product called the Three Peace Salute, dedicated to a racing hero. The product is sold through a Post Office Box in Milford, N.H., the same town Respondent identified in his address (Complaint Annex K).
-- One of the banner ads that appear on the website is for a company called Ready2Race, also owned by the Respondent.
-- The websites for the other five domain name registrations at issue here appear to be identical to the <nascargames.com> website, all featuring multiple references to Complainant, banner advertising and links to Respondent's other websites (Complaint Annex M).
-- Upon information and belief, Respondent is paid by third party advertisers on its website based upon the amount of traffic to the website (Complaint Annex F).
-- The disputed domain names are confusingly similar to Complainant's mark because: the domain names at issue incorporate Complainant's mark in full.
-- The inclusion of the generic terms "games" and "interactive" and the highly descriptive phrase "tv channel" in the domain names do not distinguish Respondent's domain names from Complainant's marks.
-- Respondent has no rights or legitimate interests with respect to the domain name because Respondent's use of the domain names is not related to any legitimate business carried on by Respondent. Complainant on the other hand has used its mark in relation to stock car racing since at least 1948, (US Reg. No. 990, 987) and began obtaining federal Principal Register registrations for its mark in 1966, (US Reg. No. 817, 553) (Complaint Annex E).
-- The inclusion of a trademark in a domain name suggests to consumers that the website found at that domain name is associated with the owner of the trademark.
-- Complainant submits that by electing to register and then use domain names incorporating Complainant's mark, Respondent was intentionally attempting, for commercial gain, to attract Internet users to the site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site.
-- Evidence of bad faith in that the domain name was registered for commercial gain can be demonstrated in many different ways. Sales of merchandise on the site and third party banner advertising are both means of profiting from a website.
-- Registration of multiple domain names that incorporate Complainant's NASCAR mark provides a valid basis for suggesting that Respondent intended to profit by using Complainant's popular mark.
-- On information and belief, Respondent registered and used the domain names in order to trade upon and profit from the public's recognition of Complainant's NASCAR marks and the enormous goodwill associated with them.
-- As of January 7, 2000, the Respondent has been legally registered and doing business under the trade name "Virtual Thunder" for the purpose of online gaming.
-- The use of the word "NASCAR" in the domain names indicates the type of games and interaction and is not confusing. The Respondent does not claim or appear to be NASCAR. Any reference to racing series and sanctions, including, but not limited to, NASCAR, are descriptive and are used to distinguish the particular events. Official sanctions, series and sponsor trademarks are not included on any of the Respondent's online properties.
-- Domain History: Business goals at the time of initial registration of the "nascargames" domains were to provide online entertainment to the online racing community. Attaining an "Official" status from NASCAR was explored in December of 1999. (Response Annex B-NASCAR Prospective Licensee Application Form).
-- In July of 1999, the Respondent started designing a website to provide a variety of games related to motor sports.
-- In November 1999, affiliate programs were very popular as the dot.com boom was quickly evolving. In an effort to explore revenue models, the Respondent joined the affiliate programs at Amazon.com and Etoys.com and decided to use the nascargames domain to list NASCAR items offered by these affiliates. The Amazon.com affiliate program generated $12.56 in referral revenue and payment has never been collected due to their minimum payment restrictions. The eToys.com affiliate program generated $0.00 and has been dissolved (Response Annex D).
-- In September 2000, a letter from the Complainant was received about the confusion of the NASCAR mark in the "nascargames" domain. At that time, a disclaimer was added to the main page of the "nascargames" website to prevent confusion and a notification letter was sent to the Complainant (Response Annex C).
-- Contrary to the Complainant's suspicion and belief, the Respondent is not generating revenue from the domain name in question or any online properties.
-- Contrary to what Complainant alleges, there does not exist any page that solicits third party advertisers.
-- The Respondent believes that the Complainant promised exclusive rights for any online NASCAR gaming to undisclosed affiliates and therefore has targeted the Respondent to set a precedent for future domain acquisitions.
-- The Respondent requests that the Panel make a finding of reverse domain name hijacking based upon the grounds of the illicit tactics, false assumptions and incorrect allegations issued by the Complainant after learning the actualities of the Respondent's situation and intentions.
6. Discussion and Findings
In order for Complainant to prevail and have the six (6) disputed domain names transferred, the Complainant must prove the following (the Policy, para. 4(a)(i-iii):
-- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
-- the Respondent has no rights or legitimate interests in respect of the domain name; and
-- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has exhibited copies of a number of mark registrations for NASCAR on the principal register of the United States Patent and Trademark Agency. The Panel notes for example service mark no. 2205056 dated November 24, 1998, in international class 41 for a database providing news on auto and truck racing. The Panel also notes NASCAR service mark registration no. 1054100 dated December 7, 1976, in international class no. 41 for regulating and promoting stock car racing (Complaint Annex E).
The only distinctive part of all the disputed domain names is the Complainant's NASCAR mark: the words "games, interactive and tv channel" are merely descriptive and in no case create a mark different from the Complainant's. The Panel therefore finds the Complainant has satisfied section 4a(i) of the Policy with regard to all six (6) of the disputed domain names, i.e., the disputed domain names are confusingly similar to Complainant's NASCAR trademark. (see e.g. WIPO/ICANN Case No. D2000-0464, Kabushiki Kaisha Toshiba d/b/a/ Toshiba Corporation v. Distribution Purchasing & Logistics Corp., July 27, 2000, where adding "store" to the Toshiba mark did not negate confusing similarity)
Legitimate Rights or Interests
The Complainant has asserted it has not given the Respondent any type of license or permission to use its NASCAR mark.
For its part, the Respondent has made conflicting arguments under the Policy about why he should be allowed to continue using the word NASCAR in the six (6) disputed domain names. The Respondent argues that his websites using the Complainant's NASCAR mark are noncommercial and thus should be allowed under Section 4c(iii) of the Policy: "you are 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." In this regard, the Respondent asserts he provided all investment money for the websites from his personal funds and that he does not accept advertising or seek any other type funding for the disputed domain name websites (Response p. 3).
However, at various other junctures in his Response, the Respondent admits to having had agreements with Etoys.com and Amazon.com whereby these companies would pay the Respondent for clients arriving via the Respondent's website (Response p. 2). Respondent asserts he made very little money from these arrangements, but the Panel finds this argument disingenuous: clearly it does not matter under the Policy how much or how little money a party makes from the commercial use of a domain name. What is controlling is whether the Respondent's website was commercial, and the Panel finds this is the case. The Respondent also acknowledges that at one point he sought to become licensed to use the Complainant's NASCAR mark (Response p. 2). Thus, the Respondent can not benefit from the non-commercial fair use provision of the Policy at 4c(iii) in order to claim a legitimate right or interest in the disputed domain names.
Nor can the Respondent benefit from the Policy provisions at 4c(i): "before any notice to you of the dispute, your 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". The Panel is certain that the Respondent's activities and interests made him intimately familiar with the Complainant's strong and famous mark. The Respondent could not have been engaging in a bona fide offering of goods and services prior to being contacted by the Complainant.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain names.
Registered and Used in Bad Faith
The Complainant has shown that the Respondent at various points in the past has had third party advertisement on his websites at, or linked to, the disputed domain names. The Respondent himself has alluded to his affiliation with Etoys.com and Amazon.com for commercial gain. The Respondent has also stated he cross-promotes with other Internet organizations without money changing hands. However, the Panel believes that a barter arrangement can result in commercial gain to the Respondent just as paying money can.
The Panel finds the Respondent's actions and contentions distill into a clear violation of the bad faith provisions of the Policy at 4b(iv), i.e., the Respondent is trying to tap into the good will of the Complainant's NASCAR mark in order to reap economic benefit through a variety of schemes, but all having to do with racing games inspired by the Claimant's real-life NASCAR events and by the Complainant's own NASCAR internet games. (Many previous ICANN decisions note that where a website is used to advertise other websites that sell goods, it is appropriate to assume the former website owner is being paid for this service. See e.g. WIPO/ICANN Case No. D2000-0102 Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, April 18, 2000).
In view of the above bad faith findings, the Panel finds untenable the Respondent's request that the Complaint be found to constitute an attempt at Reverse Domain Hijacking.
The Panel finds the six disputed domain names are confusingly similar to the Complainant's NASCAR mark. The Panel also finds the Respondent is not making a fair, non-commercial use of the Complainant's famous mark, but is instead making a non bona fide commercial use, and thus has no legitimate rights or interests in the domain names. Finally, the Panel finds the Respondent registered and is using the disputed domain names in bad faith by attempting to take advantage of the Complainant's famous mark for commercial gain for the Respondent.
Therefore, in accordance with ICANN Policy para. 4(i) and Rule 15, the Panel orders that the six (6) disputed domain names, <nascargames.com>, <nascargames.net>, <nascar-games.com>, <nascar-games.net>, <nascarinteractive.com> and <nascartvchannel.com> all be transferred from the Respondent, David Crawford Jr., to the Complainant, National Association for Stock Car Auto Racing, Inc.
Dennis A. Foster
Dated: January 20, 2002