WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Autosales Incorporated v. Don Terrill

Case No. D2001-1341

 

1. The Parties

Complainant is Autosales Incorporated, dba Summit Racing, an Ohio Corporation ("Autosales" or "Complainant") having a principal place of business at 1200 Southeast Ave., Akron, Ohio, 44309-0909 USA.

Respondent is Don Terrill ("Terrill" or "Respondent") located at 3046 Wellington Rd., Kalamazoo, Michigan, 49008 USA.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <summittracing.com> (the "Domain Name"). The registrar is Go Daddy Software, Inc. (the "Registrar") located at 14455 North Hayden Rd., Suite 219, Scottsdale, Arizona 85260 USA.

 

3. Procedural History

On November 9, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant. On November 15, 2001, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On November 22, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On December 6, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On December 14, 2001, the Center received the Response of Respondent via email. On December 18, 2001, the Center received the Response of Respondent in hardcopy.

On January 31, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Complainant has registered trademarks with the United States Patent and Trademark Office, including Registration # 1,979,695 (June 11, 1996), SUMMIT RACING EQUIPMENT, based on an actual use in commerce dating back to 1968, for the goods and services in International Class 042 described as "retail store and mail order services, featuring high performance, racing and after-market accessories for land vehicles such as automobiles, vans and small trucks."

Complainant also has a pending application Serial No. 75/750,748, SUMMIT RACING EQUIPMENT, based on an actual use in commerce dating back to either May 1985, or May 1982, depending on the class, in International Classes 012 (high performance automotive equipment and accessories, namely, engines; engine blocks; heads; transmission coolers; belts; hoses; clutch cables; clutch pilots; shifter cables; flex plates; shock absorbers; springs; differentials; wheel disks; brake proportioning valves; fender wells; roll bar gussets; battery boxes; electrical wiring and connectors; battery trays; and wire retaining rings); 025 (clothing, namely gloves, shirts, sweatshirts, jackets, t-shirts, hats, caps and sweat pants); 007 (automotive engine components, namely camshafts, intake valves, exhaust valves, thrust plates, locking plates, valve lifters, button spacers, camshaft rollers, gaskets oil pumps, oil pans, breather tanks, oil filter kits, oil filter covers, timing gear drive systems, timing tape, timing sets, push rods, guide plates, rocker arms, valve spring balancers, harmonic balancers, pistons, piston rings, bearings, crankshafts, and connecting rods; carburetors and carburetor accessories, namely, carburetor spacers, adapters, spring kits, and linkage plates; intake manifolds; exhaust manifolds; fuel lines and plumbing therefore, namely, o-ring, hose ends, hose nipples, braided hoses, hose clamps, adapters and couplers, banjo fittings, brake assemblies and pressure fittings; fuel filters; air filters; fuel injectors; fuel pumps; overflow tanks an accessories therefore, namely overflow catches, intake bolts, and header bolt kits; water pumps; fans, oil coolers; radiators; exhaust components, namely, headers, collectors, clamps, mufflers, exhaust pipes, header wraps, and catalytic converters; fly wheels; filter kits comprised of filter housing, filter mounts, hoses and fittings; alternator cases; starters; starter harnesses; ignition wires; distributors; heat shield; rotors; and coil covers); and 009 (fuel pressure regulators, fuel cells, fuel cell mounts, thermostats; water necks; gauges for fuel pressure, oil pressure, water temperature, voltage and vacuum; electrical connectors, and switches for batteries).

Complainant also has a registered trademark Registration # 1,741,692 (December 22, 1992), SUMMIT RACING EQUIPMENT SPEEDCARD, based on an actual use in commerce dating back to February 6, 1992, for the services in International Class 036 described as "credit card services." Common law trademark usage of SUMMIT SPEEDCARD based on an actual use in commerce dating back at least one (1) year for credit services. Pending Application Serial No. 78/059,447, SUMMITRACING.COM, based on an actual use in commerce dating back to February 2000, in International Class 036 (financial sponsorship of annual hot rod races).

Complainant also has a pending application Serial No. 78/059,525, SUMMIT RACING and Design, based on an actual use in commerce dating back to March 1999, in International Class 035 (mail order catalog services in the field of automotive engine components). Common law trademark usage of SUMMIT RACING based on an actual use in commerce dating back at least five (5) years for mail order catalog services in the field of automotive engine components. Pending Application Serial No. 78/059,461, SUMMIT, based on an actual use in commerce dating back to December 26, 2000, in International Class 035 (mail order catalog services in the field of automotive engine components).

Complainant also has pending trademarks outside of the United States for the mark SUMMIT. The mark is pending in Austria, Australia, Brazil, Benelux, Canada, Denmark, Community Trademark, Finland, France, Germany, Great Britain, Greece, Ireland, Italy, Japan, Mexico, Norway, New Zealand, Portugal, South Africa, Spain, Sweden, Switzerland, and Venezuela.

Application S/N

Application Date

Registration #

Registration Date

Austria

16 Aug 1995

162,036

24 Jan 1996

Australia (Class 7)

01 Mar 1993

597,256

01 Mar 1993

Australia (Class 12)

08 Sep 1994

639,826

30 Apr 1996

Brazil

20 Nov 1998

Published 02 Feb 1999

Benelux

07 Oct 1988

455,871

07 Oct 1988

Canada

21 Jul 1988

369,204

08 Jun 1990

Denmark

28 Jul 1988

VR1990-06940

26 Oct 1990

European Mark

06 Jun 1996

297,754

15 Dec 1998

Finland

17 Aug 1995

207,532

30 Sep 1997

France

07 Jul 1988

1,625,777

07 Jul 1988

GermanyTM

11 May 1988

1,149,558

13 Nov 1989

Germany SM

21 Aug 1990

DD654,157

31 Mar 1998

Great Britain Class 7

20 Jan 1993

1,524,509

20 Jan 1993

Great Britain class 12

31 Jul 1990

1,434,236

31 Jul 1990

Great Britain (& Device)

Unknown

330,391

25 Jan 1911

Greece

05 Sep 1995

126,045

17 Feb 1998

Ireland TM, Class 7

17 Aug 1995

174,240

17 Aug 1995

Ireland TM, Class 12

17 Aug 1995

174,241

17 Aug 1995

Ireland SM, Class 39

17 Aug 1995

202,062

01 Jul 1996

Italy

03 Oct 1995

00731070

21 Oct 1997

Japan SM, Class 35

02 Dec 1998

Japan SM, Class 42

07 Dec 2000

Mexico TM, Class 7

15 Sep 1995

506,416

29 Sep 1995

Mexico TM, Class 12

15 Sep 1995

579,143

26 Jun 1998

Mexico SM, Class 42

15 Sep 1995

506,417

29 Sep 1995

Norway

04 Sep 1995

192,518

03 Sep 1998

New Zealand TM, Class 12

18 Feb 1999

305,311

12 Nov 1999

New Zealand SM, Class 35

18 Feb 1999

305,312

12 Nov 1999

Portugal

10 Nov 1995

313,663

17 Feb 1998

South Africa

22 Mar 1988

88/2239

13 Nov 1992

Spain

Sweden

07 Apr 1988

225,215

26 Jul 1991

Switzerland

24 Mar 1988

362,802

09 Sep 1988

Venezuela

14 Jul 1999

Complainant, as Summit Racing Equipment, has used the <www.summit racing.com> URL for its web address since December 27, 1995. Don Terrill has used the <www.summittracing.com> URL for a web address since June 14, 2001.

 

5. Partiesí Contentions

A. Complainantís contentions

i. Complainant contends that it has numerous registrations of the trademark SUMMIT RACING EQUIPMENT with pending applications and common law rights in SUMMIT RACING and SUMMIT (the "Trademark") and that its trademark registrations are valid and subsisting.

ii. Complainant argues that the Domain Name is confusingly similar to the Trademark, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the trademark SUMMIT RACING with the addition of generic terms.

Complainant contends that Internet users may mistakenly enter the Respondentís Domain Name site instead of Complainantís intended location. Additionally, when viewed, users may believe that Complainant sponsors or endorses the type of inappropriate activity encouraged by Respondent.

Complainant further contends that the Domain Name <summit racing.com> registered by the Respondent with the Registrar on June 14, 2001, is phonetically identical and confusingly similar to the trademarks which the Complainant has exclusive rights and the Respondent knew or should have known that it would easily be mistaken for the Complainant in this case.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Complainant further contends that the Respondent is not known to have any legitimate business interest in the Trademark, and apparently is engaged in the business of registering domain names that infringe upon otherís trademarks. The Domain Name was registered primarily for the purpose of disrupting the business of Complainant.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known by the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Trademark in a domain name or in any other manner.

Complainant further contends that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant further contends that the Respondent's registration and use of the Domain Name meets the bad faith element set forth in Section 4(b)(iii) of the Policy. By attracting Internet users away from Complainantís website to his own website, the Complainant has shown that the registration and use of the Domain Name was primarily for the purpose of disrupting the business of the Complainant.

Complainant further contends that Respondentís registration and use of the Domain Name meets the bad faith element set forth in Section 4(b)(iv) of the Policy. Specifically, Respondent uses the Domain Name to intentionally attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainantís Trademark as to the source and/or endorsement of Respondent's website and the advertisements of the services offered at that site.

Complainant asserts that it already has an Administrative Panel Decision in its favor in Autosales Incorporated v. John Zuccarini, Case No. D2001-0230 involving the Domain Name.

B. Respondentís contentions

i. Respondent does not dispute that the Complainant has registrations of the Trademark.

ii. Respondent admits that the Domain Name is confusingly similar to the Trademark, but asserts that Respondent put a disclaimer on his website denying any affiliation with Complainant and giving Complainantís true website.

iii. Respondent asserts that it has rights to or legitimate interests in the Domain Name because he is operating a family business which made only $15,000 last year by packaging domain names with business plans and offering the package for sale to third parties. These packages are generally done in the name of an affiliate or potential affiliate with Respondent. The affiliate related to the Domain Name never activated the website, leaving only the homepage with disclaimer and links to other sites of Respondent.

iv. Respondent notes that it is not in the business of registering domain names of existing companies. Respondent denies that it registered or used the Domain Name in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies.

v. Respondent asserts that the Complainant by commencing the present action is engaged in an attempt to reverse domain name hijacking.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Sole Panelist as to the principles the Sole Panelist 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."

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Sole Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, Case No. D2000-1772 (WIPO Apr. 10, 2001), n. 3.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the Trademark and that its trademark registrations are valid and subsisting. Such registrations serve as prima facie evidence of its ownership and the validity of the Trademark. 15 U.S.C. ß 1115. Complainant registrations are incontestable and conclusive evidence of its ownership of the Trademark and exclusive right to use the Trademark in connection with the stated goods and services. 15 U.S.C. ßß 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is the Sole Panelist's belief that Respondent has not contested the rights of Complainant in the Trademark nor has Respondent met its burden to rebut the above presumption.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the Trademark. Respondent asserts that he was aware of the confusion and placed a disclaimer on his website denying any affiliation with Complainant and giving Complainantís true website.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainantís registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, Case No. D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainantís registered trademark.

The owner of the registered trademark does not have to show "likelihood of confusion," as that term is used in trademark infringement jurisprudence, to establish that a domain name incorporating a trademark in its entirety is identical or confusingly similar for purposes of this first factor. Under Paragraph 4(a)(i), the question of identity and confusing similarity is evaluated solely based on a comparison between the complainantís trademark and the alphanumeric string constituting the domain name at issue. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., Case No. D2000-1525 (WIPO Jan. 29, 2001). It thus is irrelevant, for purposes of evaluating the first factor, whether consumers would avoid confusion by reviewing the content of Respondentís website.

The Sole Panelist notes that the entirety of the variation of the Trademark SUMMIT RACING is included in the Domain Name.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the Trademark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000).

Respondent has no relationship with or permission from Complainant for the use of the Trademark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] 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.

The Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Name. Although Respondent asserts that the Domain Name is being used for commercial gain, Respondent denies any intent to misleadingly divert consumers to his own website, pursuant to the Policy paragraph 4(c)(iii). However, of critical importance on the internet is the routing or diversion of traffic to oneís website. The use of a registered trademark in a domain name allows the entity registering the domain name to capture traffic and point or divert it to another website.

Courts have recognized that consumers expect to find a company on the internet at a domain name address comprised of the companyís name or trademark. See Panavision Intíl, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) ("A customer who is unsure about a companyís domain name will often guess that the domain name is also the companyís name . . . . [A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." (citations omitted)). Thus, consumers would expect to find an official website at a domain name comprised of a famous mark.

Respondent admits that he knew of the possibility of misleading internet users looking for Complainantís site, thus the reason for Respondentís disclaimer.

The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product

Complainant further contends that the Respondent's registration and use of the Domain Name meets the bad faith elements set forth in Sections 4(b)(iii) and (iv) of the Policy.

Complainant alleges that the Respondent has intentionally attempted to attract internet users for commercial gain by creating a likelihood of confusion. The Sole Panelist found above that the Domain Name is confusingly similar to the Trademark. However, Respondent asserts that his disclaimer is sufficient to dispel any confusion and defeat Complainantís allegations of bad faith.

The use of a disclaimer by Respondent is not sufficient to create a defense to bad faith under Paragraph 4(b)(iv) of the Policy, because of initial interest confusion. The Respondent's website and repeated use of Complainant's trademark in his website create a likelihood of initial interest confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant's website. Even though a misdirected user may become aware that the website is not affiliated with the Complainant, the fact remains that the Respondent's improper and unauthorized use of the Trademark diverts the internet user seeking Complainantís official website. This initial interest confusion violates Complainantís rights in its trademark. See Brookfield Communs, 174 F.3d at 1057 (discussing likelihood of confusion and noting that "Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store's ownership," and that even where people realize, immediately upon accessing the complained-of website, that they have reached a site operated by someone other than the trademark owner, the infringing website will still have gained a customer by appropriating the goodwill of the trademark owner).

A number of cases, including UDRP Panel and Federal Court decisions, recognize that intentional use of plaintiffís well known mark to attract purchasers into an initial interest in defendantís goods or services causes likelihood of confusion and amounts to bad faith. See e.g., Sears, Roebuck & Co., supra, [intentional use to attract attention "must logically be assumed to benefit Respondent"]; Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (September 25, 2000) [competition with complainant for the attention of internet users which respondent hopes to divert to its site is evidence of bad faith]; Cartier Inc. v. Deziner Wholesale, L.L.C., 2000 U.S. Dist. LEXIS 4157, 55 U.S.P.Q.2d 1131, 1134 (S.D.N.Y. 2000) [label including Cartier mark triggers customersí interest by capitalizing on goodwill associated with Cartier, even assuming that disclaimers to some degree correct consumerís initial impression]; Elvis Presley One Enterprises, Inc. v. Capece, 141 F.3d 188, 204 (5th Cir. 2000); [marketing scheme based on the tremendous drawing power of the Presley name and its ability to attract consumer interest and attention supports finding of intent to confuse]; Pebble Beach Co. v. Tour 18 I, Ltd., 942. F.Supp. 1513, 1551 n. 36, 1552 (S.D. Tex. 1996) affíd, 155 F.3d 526 (5th Cir. 1998) [Lanham Act is violated even if initial interest is later dispelled through use or familiarization with the product; by that time defendant has already reaped the benefit of any customer confusion].

Therefore, the Sole Panelist finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

Reverse Domain Name Hijacking

Complainant has prevailed on its claim and, therefore, has not engaged in reverse Domain Name hijacking.

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name <summittracing.com> is confusingly similar to Complainantís numerous registrations of the Trademark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Complainant.

 


 

Richard W. Page
Sole Panelist

Dated: February 24, 2002