WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

National Association for Stock Car Auto Racing, Inc. v. Steven R. Shacklette

Case No. D2001-1350

 

1. The Parties

The complainant is the National Association of Stock Car Auto Racing, Inc. ("NASCAR"), a Florida corporation organized under the laws of the State of Florida with its principle place of business in Daytona, Florida (the "Complainant"). The Complainant is represented by Elizabeth Pasquine, Esq., Kilpatrick Stockton LLP, 11130 Sunrise Valley Drive, Suite 300, Reston, Virginia, United States of America.

The respondent is Steven R. Shacklette, an individual whose mailing address is 596 Brooksview Circle, Brooks, Kentucky, United States of America (the "Respondent").

 

2. The Domain Name and Registrar

The disputed domain name is <nascaracing.com> (the "Disputed Domain Name"), registered with Network Solutions, Inc. ("NSI") of 505 Huntmar Park Drive, Herndon, Virginia, United States of America (the "Registrar") on May 8, 1999.

 

3. Procedural History

Complainant filed a complaint (the "Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on November 12, 2001, and was assigned case number D2001-1350.

The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Uniform Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"), and the WIPO Center Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), in accordance with Paragraph 4(a) of the Uniform Rules, and Paragraph 5 of the Supplemental Rules. The Administrative Panelist (the "Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.

The Center issued a Request for Registrar Verification to NSI on November 20, 2001, and received the Registrar's response on November 21, 2001. The Registrar's response indicated that the Disputed Domain Name was registered to Steven Shacklette of 596 Brooksview Circle, Brooks, Kentucky, United States of America.

A Formal Notification of the Complaint and Commencement of the Administrative Proceeding (the "Commencement Notification") was communicated by the Center to the Registrar by email and the Respondent by courier and email on November 30, 2001. The Panel has seen the courier receipt and is satisfied that the delivery of the Commencement Notification is in conformity with the relevant requirements under Paragraph 2 and Paragraph 4 of the Uniform Rules and the relevant provisions of the Supplemental Rules.

The Center received a query from Respondent on December 5, 2001, which the Center responded to on December 7, 2001, notifying Respondent with instructions on how to submit its response (the "Response"). On December 18, 2001, Respondent filed its Response to the Complaint. In its Response, the Respondent did not indicate a panel election, and therefore waived the right to designate a three-member Administrative Panel under Paragraph 5(b)(iv) of the Uniform Rules. Complainant has therefore elected to designate a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Uniform Rules. The Center sent an Acknowledgment of Receipt of Response on December 18, 2001.

Based on a Statement of Acceptance and Declaration of Impartiality and Independence, duly signed by the Panel and dated January 15, 2002, the Panel was duly appointed by the Center on January 21, 2002. A Notification of Appointment of the Panel and Projected Decision Date was communicated by the Center to both Complainant and Respondent on January 21, 2002. There have been no further submissions thereafter.

 

4. Factual Background

The facts in this case that do not appear to be in dispute are as follows:

(i) Complainant is National Association for Stock Car Auto Racing, Inc. ("NASCAR"). The Complainant is the owner of forty-two United States federal trademark and service mark registrations that incorporate its NASCAR name and mark. (See Annex E of the Complaint). The Complainant has eleven pending applications in the United States that incorporate its NASCAR mark and has pending applications for its NASCAR marks in approximately thirty-seven additional countries. (See Annex F of the Complaint).

(ii) Complainant operates its website at <nascar.com>. The site features information about racing and merchandise bearing the NASCAR mark. (See Annex G of the Complaint). The <nascar.com> domain name was registered on December 28, 1995. Complainant also owns domain name registrations for <nascarrace.com>, <nascarracers.com>, <nascarracers.net>, and <nascarracers.org>. (See Annex H of the Complaint).

(iii) Complainant describes itself as "the worldís premier regulating, governing and sanctioning body for stock car automobile races." Complainant, directly and through its licensees, also markets, sells and distributes a wide variety of goods and services under its NASCAR mark. (See Annex F of the Complaint).

(iv) Complainant has never authorized Respondent to use the NASCAR marks and has repeatedly asked Respondent to transfer the domain name to Complainant since it became aware of Respondentís website. (See Annex L of the Complaint). Respondent offered to sell the domain name to Complainant for $27,600, Respondentís estimation of loss, if Respondent had to "reestablish the current traffic" that it had. (See Annex M of the Complaint).

(v) Respondentís website features racing information for Complainantís series of races, as well as several other racing organizations, bearing Complainantís marks and logos, with a disclaimer at the bottom of the page stating "nascaracing (north american sports car and racing) or the operator of this website is not affiliated with, endorsed by, or sponsored by NASCAR®. The official NASCAR website is NASCAR ONLINE. NASCAR Racing ©1994, is a registered trademark of Papyrus Design Group, Inc. NASCAR Racing is officially licensed by NASCAR®." (See Annex I of the Complaint). The website also has an online store that features an icon called "NASCAR Items." (See Annex I of the Complaint). Respondentís site also includes a page that offers advertising space at the top and bottom of all or selected pages. (See Annex I of the Complaint).

(vi) In 1999, Respondent offered to let NASCAR fans register their e-mail at <nascaracing.com> for a fee of $5 per month, or $50 per year. (See Annex J of the Complaint).

 

5. Parties' Contentions

Complainant asserts:

(i) The Disputed Domain Name is confusingly similar to Complainant's trademark, NASCAR. The Complainant assets it has many subsisting federal trademark registrations on the Principal Register for the mark NASCAR alone or with other wording and no other entities own federal registrations incorporating the mark NASCAR. Adding the word "racing" to Complainantís mark identifies the subject matter of Complainantís primary service and, if anything, will reinforce consumersí association of Respondentís domain name with Complainant. Complainant cites William Hill Organization Limited v. Fulfillment Management Services Limited, ICANN Case No. D2000-0826, holding that the addition of generic terms, which describe the Complainantís primary business, did not distinguish the Respondentís domain name from the Complainantís mark, and Respondentís use of a generic term with Complainantís primary business was likely to reinforce association with Complainant.

(ii) Respondent does not have any rights or legitimate interest in the Disputed Domain Name. Respondent is not related to any legitimate business carried on by Respondent. Complainant has used its mark in relation to stock car racing since 1948, (U.S. Reg. No. 990,987) and began obtaining federal Principal Register registrations for its mark in 1966 (U.S. Reg. No. 817,553). Complainant states an U.S. trademark registration on the principal register is considered prima facie evidence on the holderís exclusive right to use the mark. Complainant contends several of its registrations have attained incontestable status under Section 15 of the Act. Under Section 33(b) of the Act, an incontestable registration is considered conclusive evidence of Complainantís exclusive right to use its mark NASCAR.

Complainant asserts that Respondent has noted in its correspondence to Complainant that Respondentís use of NASCAR refers to "North American Sports Car and Racing," and that Complainantís trademark "happens to be included" in Respondentís acronym. Yet, numerous other acronyms for the other race sanctioning bodies featured on the <nascaracing.com> site represent the actual sanctioning bodies. Complainant submits Respondentís argument is a contrived effort to establish legitimate rights in the mark after the Disputed Domain Name was registered. Complainant cites American Online Inc. v. DuSung Group, ICANN No. D2000-1523, which rejected Respondentís creating the acronym AOL to mean "beautiful mystic" or "Animal Online" and its denial of knowledge of Complainantís well-known mark, AOL.

Complainant states that Respondentís attempts to gain legitimate rights and interests in Complainantís marks by fabricating another meaning for NASCAR and adding information about other racing circuits to the site after he registered and began using the Disputed Domain Name should not be given credence. In particular, Complainant states that prior to its request that Respondent cease its use of the Disputed Domain Name, the explanation of the acronym and information regarding other racing circuits was not posted on the site. The fact that the site encompasses the two now does not overcome Respondentís initial lack of legitimate interests or rights in the NASCAR mark at the time it registered the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used by Respondent in bad faith. Complainant reasonably believes that prior to Respondent registering the Disputed Domain Name, Respondent was aware that Complainant was the owner of the NASCAR mark because of Complainantís many trademark registrations and its widespread and long-standing promotion, marketing, and operation of its NASCAR auto racing series and other goods and services offered by Complainant and its many licensees. Complainant asserts that because a registration on the principal register is considered constructive notice of the registrantís claim of ownership under US trademark law, a subsequent domain name registrant is presumed to have notice of the trademark registrantís prior rights in a mark. One of the many cases Complainant cites is Barneyís Inc. v. BNY Bulleting Board, ICANN Case No. D2000-0059, which held that Respondent had notice of Complainantís rights in the mark prior to registering the Disputed Domain Name based upon Complainantís federal trademark registration for its mark. The Panel in this case also found that Complainant was well known in the retail market and the fame of Complainantís mark constituted further evidence that Respondent was aware of Complainantís rights therein.

Based upon its federal trademark registrations and evidence of extensive use and promotion of its marks, Complainant submits that Respondent was well aware of Complainant and the value of being endorsed, sponsored or affiliated with NASCAR prior to its registration of the Disputed Domain Name. Therefore, Respondent was intentionally attempting, for commercial gain, to attract Internet users to the site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the website. Complainant asserts that by Respondent featuring merchandise and advertising for itself and third parties on its site, Respondent receives financial benefit based upon diversion of consumers by using Complainantís trademark NASCAR in the Disputed Domain Name. Complainant submits that Respondentís estimation of losing approximately $27,600 in the event that Respondent must change his domain name is further evidence of Respondentís success at luring business away from Complainant through unauthorized use of Complainantís trademark. Respondentís offer to sell the Disputed Domain Name to Complainant for the $27,600, far in excess of Respondentís out-of-pocket costs directly related to its registration of the domain name, provides additional evidence of bad faith use. This is an attempt to profit in exchange for ceasing his misuse of Complainantís trademark.

The Complainant contends that the inclusion of a disclaimer on the website to indicate that it is not affiliated with Complainant does not cure the confusion that leads consumers to Respondentís website. The Complainant cites The New York Times Company v. New York Internet Services ICANN Case No. D2000-1072, in which the Panel found that "disclaimers Ö do not dispel initial interest confusion."

Based on information and belief, Complainant asserts Respondent registered and used the Disputed Domain Name in order to trade upon and profit from the publicís recognition of Complainantís NASCAR marks and the enormous goodwill associated with them. Accordingly, Complainant requests that the Panel order that the Disputed Domain Name be transferred to Complainant.

Respondent asserts:

(i) The domain name is similar to Complainantís mark. Respondent asserts that in the last couple of years, there has only been a couple of occasions where someone mistook its website for the official NASCAR website. Respondent received complaints about Complainantís organization and not Complainantís website. Respondent responded by sending the complainers Complainantís website address. Respondent contends the domain name he registered reflects what the main focus of information on the website is related to, NASCAR racing, and other related racing organizations.

(ii) Respondent believes the content of the website has shown a legitimate interest in the NASCAR racing sport, as well as other forms of racing. Respondent asserts that the website has been used for his interest in racing since he registered the Disputed Domain Name.

(iii) The Disputed Domain Name was not registered and is not being used in bad faith. Respondent contends the Disputed Domain Name has been used to support the interest of the NASCAR racing sport and other forms of racing sports. Moreover, there has never been any negative information or indications towards Complainantís organization or other racing organizations. Respondent states that he has always promoted Complainantís organization, as well as other racing organizations as being very positive and good for the racing sport, and has links on its website to direct visitors to Complainantís website and other racing organization websites for information regarding the racing sport. Respondent asserts that it has never initiated any contact with Complainant and has responded to Complainantís initial contacts, in which Complainant has directed the conversations.

Further, Respondent asserts that other similar names have not been registered by anyone such as <nascaracing.net>, <nascaracing.org>, and that "others are even redirecting visitors to pornography web sites." Therefore, Respondent contends Complainantís time would be better served disputing those websites.

 

6. Discussion and Findings

(i) The Disputed Domain Name is confusingly similar to the trademark in which Complainant has rights

Paragraph 4(a)(i) of the Uniform Policy asks whether the Disputed Domain Name is identical or confusingly similar to the trademarks in which Complainant has rights.

The Disputed Domain Name not only fully incorporates Complainantís trademark, which can be a source of confusion, but also combines the mark with a term that describes the primary service associated with Complainantís trademark. Complainant has trademark rights in the United States that date at least as far back as 1948, and has possessed a registered trademark since 1966. Several of Complainantís trademarks, including the term NASCAR, have gained incontestable status under Section 15 of the United States Trademark Act. (See 15 U.S.C. ß 1065). Moreover, Respondent does not assert that NASCAR is merely descriptive or generic and does not dispute the fact that the names are similar. Respondent did not register the Disputed Domain Name until May 1999, long after Complainant established its right to the NASCAR mark. Hence, the Complainant clearly has rights to the NASCAR mark.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the NASCAR mark and Respondent is also taking advantage of Complainantís goodwill and causing consumer confusion by advertising and promoting the same or similar services as currently provided by Complainant under its trademark NASCAR.

The Panel finds for the Complainant on the first element, that Respondent's domain name is confusingly similar to the trademark in which the Complainant has rights.

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

Paragraph 4(a)(ii) of the Uniform Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.

Although Respondent operates a website associated with the Disputed Domain Name that offers information on the NASCAR racing sport and other forms of racing sports, and has done so since 1999, Respondentís confusingly similar use of Complainantís marks does not create a bona fide offering of goods or services. The Panel is inclined to believe that Respondentís efforts to create evidence of legitimate use (claiming that NASCAR corresponds to a different acronym and including information about other racing organizations) was indeed contrived. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of Complainantís marks. Respondentís site is clearly for profit in that it sells advertising, goods and associated services (email) and by Respondentís own admission has a specific commercial value. Respondent is not commonly known by the Disputed Domain Name. Accordingly, there is no evidence proving that Respondent has rights or a legitimate interest in the domain name, other than for the purpose of capitalizing on Complainantís trademark rights.

By refusing to transfer the Disputed Domain Name, knowing that it has no rights or legitimate interests in the mark incorporated into the Disputed Domain Name, Respondent purposely prolongs a situation which is at odds with the legal rights of the Complainant and intentionally obstructs the registration of the domain name in the name of Complainant, and its subsequent use by Complainant.

Under the facts as presented in this case, and in accordance with the Uniform Policy paragraph 4(a)(ii) as stated above, Respondent does not appear to have any rights or legitimate interest in respect of this domain name. Mere registration alone cannot constitute such rights. Therefore, the Panel finds for the Complainant on the second element and Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

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

The Panel finds untenable Complainantís contention that under Paragraph 4(b)(i) of the Uniform Policy, Respondent registered the Disputed Domain Name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration Ö for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name."

There is no evidence that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant or a competitor. The Complainant contacted Respondent on three separate occasions requesting that Respondent cease from using the Disputed Domain Name and offered to reimburse Respondent for his expenses associated with transferring the domain name registration. Respondent sent Complainant a letter on August 7, 2000, in which Respondent stated "I estimate a loss of $27,600.00. With this amount I would be willing to immediately turn over the <nascaracing.com> domain name to NASCAR." The fact that Respondent has made a demand for a substantial sum of money in response to Complainantís request to purchase the Disputed Domain Name is not of itself evidence of bad faith. Complainant has not shown that Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant or any of Complainantís competitors. The only contact Respondent has made with Complainant is contact in response to letters sent by Complainant.

The Panel does find tenable Complainantís contention that under Paragraph 4(b)(iv) of the Uniform Policy, Respondent has "intentionally attempted to attract, for commercial gain, Internet users Ö by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement." The basis for this finding is that Respondent operates a website that an ordinary consumer would likely believe was operated or sponsored by Complainant or otherwise affiliated with Complainant. Additionally, Complainant has established that Respondent has engaged in such commercial exploitation by offering advertising space at the top and bottom of all or selected pages on its site. It appears that Respondent is paid by third party advertisers, based upon the amount of traffic it receives to its website or by revenue linked to the sale of merchandise through its website.

In 1999, Respondent also offered to let NASCAR fans register their e-mail at the Disputed Domain Name site for a fee of $5.00 per month, or $50 per year, thus benefiting financially from consumer confusion. As evidenced by Complainant, Respondent did not create the meaning for the acronym NASCAR [1] until it was contacted by Complainant to cease using Complainantís mark. This is further evidence of Respondentís bad faith. Respondentís disclaimer of affiliation with Complainant cannot cure the initial confusion it generated through its Disputed Domain Name. See The New York Times Company v. New York Services ICANN Case No. D2000-1072. Further, Respondent asserts at the end of the disclaimer "NASCAR Racing is officially licensed by NASCAR®." This conflict with the disclaimer, is disputed by Complainant, and would lead a reasonable consumer to believe that Respondent is affiliated with Complainant. Nevertheless, as stated in DaimlerChrysler Corporation v. Brad Bargman ICANN Case No. D2000-0222, "[D]isclamers are not always read or understood, and potential customers may not notice or appreciate Respondentís disclaimer."

It does not matter under the Uniform Policy how much or little money a party makes from the commercial use of a domain name. The controlling factor is whether or not the Respondentís website is commercial. Thus, the Panel finds that Respondent deliberately used confusingly similar imitations of Complainantís marks to increase the number of hits on Respondentís website thereby increasing the Respondentís revenues. The Respondent capitalized on the confusion of Internet users drawn by the NASCAR-related domain name to expose them to commercial advertising that is not approved by or affiliated with Complainant. Therefore, the Disputed Domain Name was registered and is being used in bad faith.

 

7. Decision

In light of the foregoing, the Panel hereby determines that the Disputed Domain Name is confusingly similar to a well-known trademark in which Complainant has rights, that Respondent lacks rights to or a legitimate interest in the Disputed Domain Name, and that the Respondent registered and used the Disputed Domain Name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Uniform Policy, and paragraph 15 of the Uniform Rules, the Panel hereby orders that the Disputed Domain Name <nascaracing.com> be transferred to the Complainant.

 


 

Timothy D. Casey
Sole Panelist

Dated: February 4, 2002

 


 

Footnote:

1. Respondent asserts on its website that NASCAR stands for "North American Sports Car and Racing." In Annex I of Complainantís Complaint, initially NASCAR was the only racing organization that Respondent focused on and NASCAR was defined as "National Association for Stock Car Auto Racing, Inc." (Complainant).