WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL

Case No. D2001-1387

 

1. The Parties

The Complainant: National Association of Stock Car Auto Racing, Inc., 1801 West International Speedway Blvd., Daytona Beach, FL 32114, United States of America.

The Respondent: RMG Inc - BUY or LEASE by E-MAIL, 5 Tpagrichneri St., #33, Yerevan, 375010, Armenia.

 

2. The Domain Name and Registrar

The domain name in issue is <nascarnowmag.com> (hereafter "the domain name").

The domain name was registered with BulkRegister.com, Inc., 10 East Baltimore St., Suite 15, Baltimore, MD 21202, United States of America.

The domain name was registered with the Registrar in question, on or about March 3, 2001.

 

3. Procedural History

(1) The Complaint in Case No. D2001-1387 was received by e-mail on November 21, 2001, and in hardcopy on November 26, 2001.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- No Response was filed;

- The Respondent was appropriately notified of default;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) No extensions have been granted or orders issued in advance of this decision.

(6) The expected date of decision in this proceeding is January 28, 2002.

(7) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its marks

Complainant is the worldís premier regulating, governing and sanctioning body for stock car automobile racing. The Complainantís racing events are the number one spectator sport in the United States. Annual attendance at Complainantís Winston Cup Series races, one of its sanctioned racing series, was over 6 million in 1997, and grew to over 6.3 million in 1998 and to over 6.5 million in 1999. Annual attendance at the NASCAR Busch Cup Series races, another of Complainantís sanctioned racing series, was over 2.1 million in 1998 and grew to over 2.3 million in 1999. In 2000, seventeen of the best attended sporting events in the United States were Winston Cup series races. Complainantís Winston Cup series racing events are nationally televised on cable or network television and/or broadcast via radio. The Daytona 500, Complainantís premier annual Winston Cup stock car race, has been televised on CBS since 1978. The cumulative worldwide audience for this single race for the years 1979-1996 tops three million viewers. In addition, Complainantís radio program broadcasts racing events through 475 affiliate stations to 90% of the total US market. The listening audience averages 3 million people per race. Complainantís racing events have been broadcast internationally on television and radio for many years.

Complainant has registered "NASCAR" as a trade or service mark throughout the world, including forty-one US federal trademark and service mark registrations and ten pending applications in the United States that incorporate "NASCAR", and registered or pending applications for NASCAR marks in thirty-seven additional countries, including the European Union, Switzerland, Norway, Greece, Oman, Qatar, the United Arab Emirates, Saudi Arabia, and other countries in North America, Europe, South America and Asia. Complainant has used its NASCAR marks in connection with stock car racing since at least 1948. Complainant has established a family of NASCAR trademarks and service marks used in connections with a wide range of goods and services. They include, inter alia, NASCAR, NASCAR INTERNATIONAL; NASCAR Ė EVERYTHING ELSE IS JUST A GAME; NASCAR WINTER HEAT; NASCAR SHOWCASE; NASCAR LIVE; NASCAR TODAY; NASCAR CAFÉ; NASCAR COUNTRY; NASCAR GARAGE; NASCAR REVOLUTION; NASCAR ROCKS AMERICA and INSIDE NASCAR.

B. The Respondents

The Respondent has not filed a Response. According to BulkRegisterís Whois database, the Respondent in this administrative proceeding is as provided above, of the above address. No other information is known about the Respondent.

C. The Domain Name

The domain name resolves correctly. The website at the domain name features pornographic material that can be accessed by clicking the "Enter Here" link. Below the pornographic material is a link that reads "click here to buy this domain name." That links to a page that states that the domain is for sale, but that "any offer below $550.00 USD will be ignored." When one attempts to exit the website, successive advertising windows appear, some with graphic content, featuring links to pornographic websites.

 

5. Partiesí Contentions

A. The Complainantís assertions

The Complainant submits that the Respondentís domain name is identical or confusingly similar to the Complainantís marks, for the following reasons:

- The domain name <nascarnowmag.com> incorporates Complainantís NASCAR mark in full. It is well settled under United States trademark law that although the marks must be considered in their entireties, one feature of a mark may be recognized as more significant in creating a commercial impression and that greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. See In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); and In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). Here, the dominant term is NASCAR. Complainant has many subsisting federal trademark registrations on the Principal Register for this term alone or with other wording. Moreover, no other entities own federal registrations that incorporate the term NASCAR, increasing the association of the mark with Complainant.

- The presence of NOWMAG in the domain name does not obscure the connotation of NASCAR. It is well settled that the mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion. See Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) ("BENGAL" and "BENGAL LANCER"); and In re Riddle, 225 USPQ 630 (TTAB 1985) ("ACCUTUNE" and "RICHARD PETTY'S ACCU TUNE").

- Complainant submits, however, that consumers are as likely, if not more likely, to perceive the domain name not as <nascar nowmag>, but as a reference to "NASCAR NOW mag," or "NASCAR NOW magazine." This perception would also cause confusion as to the sponsorship of the website because the individual terms NOW and MAG do little to distinguish the domain name from Complainantís mark.

- The individual term NOW has previously been held generic when added to a well known mark. See Hewlett-Packard Company v. Jinsu Kim ICANN Case No. FA0107000098012, September 5, 2001 (Respondent has no legitimate rights in a domain name comprised of Complainantís well known HP mark and the "generic word: Ďnowí.") When a commonly used term is added to a well-known trademark, such are Complainantís, the effect of the additional term is minimal. See America Online, Inc. v. Kandl Co. Ltd, ICANN Case No. D2000-1695, February 26, 2001 ("the addition of a common verb, or any other non-distinctive wordÖto an otherwise well known mark" results in a domain name that is "at least confusingly similar to the well known mark.").

- Further, the individual term "mag," is merely a generic slang term for "magazine." See Annex I. Complainant has used its NASCAR mark on magazines since at least as early as March 1990, and has held a federal registration (US Reg. No. 1,850,527) for the same since 1994. Complainant has also used its NASCAR mark in relation to online databases of information since at least as early as February 1, 1997, and has held a registration (US Reg. No. 2,205,056) for the same since 1998. Thus, the inclusion of "mag" in the domain name likely leads those who encounter the domain name to believe that the website features a publication produced by or affiliated with Complainant.

The Complainant submits that the Respondent has no legitimate interest or rights in the domain name, for the following reasons:

- Complainant has used its mark in relation to stock car racing since at least 1948 (US Reg. No. 990,987) and began obtaining US federal Principal Register registrations for its mark in 1966 (US Reg. No. 817,553). A United States trademark registration on the Principal Register is considered prima facie evidence of the holderís exclusive right to use the mark. U.S. Trademark Act Section 7(b). Several of Complainantís registrations have attained incontestable status under Section 15 of the Act. Under Section 33(b) of the Act, incontestable registrations are considered conclusive evidence of Complainantís exclusive right to use its mark, NASCAR. Complainant never authorized Respondent to register or use the mark in any manner.

- Respondentís use of <nascarnowmag.com>, however, is not related to any legitimate business carried on by Respondent. Respondent did not acquire the domain name at issue until March 3, 2001. There is no evidence to suggest that Respondent is commonly known as NASCAR nor is there any reference to the significance of the domain name on the website.

- Linking the domain name to pornographic material does not constitute legitimate, noncommercial or fair use of Complainantís trademark. See Bank of America Corporation v. RMG - BUY or LEASE this domain by E-MAIL ICANN Case No. FA0104000097118 (Respondent RMGís link to pornographic website for profit not legitimate noncommercial or fair use); and Hewlett-Packard Company v. Jinsu Kim, ICANN Case No. FA0109000098012 (linking to sexually explicit websites does not constitute a "legitimate noncommercial, or fair use").

- Finally, Complainant submits that the evidence of record supports a finding that Complainantís mark is famous. In cases involving famous marks, previous panels have found a presumption against the unaffiliated domain name registrantís legitimate use of the domain name. See The Pep Boys Manny, Moe and Jack of California v. E-Commerce Today, Ltd., ICANN Case No. AF-0145, May 3, 2000 (holding that Complainantís mark had "attained the status of Ďfamous markí under the provisions of 15 U.S.C. ß 1125(c)(1)," and, despite Respondentís claim of embarking on an unrelated business venture, the panel remained "unpersuaded that [Respondent] has any legitimate rights in the domain name in question."); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group., ICANN Case No. D2000-0163, May 1, 2000 (noting that the Respondent has "no rights or legitimate interests in the domain name . . .").

The Complainant submits that the Respondent has registered and is using the domain name in bad faith, for the following reasons:

- Complainant reasonably believes that Respondent was aware that Complainant was the owner of the NASCAR mark prior to Respondentís registration and use of the domain name <nascarnowmag.com>, and therefore, registered it in bad faith.

- Even a single registration on the Principal Register is considered constructive notice of the registrantís claim of ownership under US trademark law. Thus a subsequent domain name registrant is presumed to have notice of the trademark registrantís prior rights in a mark. See Barneyís Inc. v. BNY Bulletin Board, ICANN Case No. D2000-0059, April 2, 2000 (Respondent had notice of Complainantís rights in the BARNEYíS NEW YORK mark prior to registering the domain name <barneysnewyork.com> based upon Complainantís federal trademark registration for its mark.) Complainant owns not one, but forty-one trademark registrations on the Principal Register of the United States, all of which provide constructive notice of Complainantís trademark rights in the NASCAR mark.

- Federal registration is not the only form of notice to a subsequent domain name registrant. In the Barney case, the panel also found that Complainantís high profile presence in the retail market and the fame of Complainantís mark constituted additional evidence that Respondent was aware of Complainantís rights therein. Complainant has made extensive, international use of its marks over the last fifty years. Examples of the extent of its use include its status as the number one spectator sport in the United States, the high volume of traffic on its website, and the vast array of goods and services offered under its marks. See Expedia, Inc. v. European Travel Network, ICANN Case No. D2000-0137, April 18, 2000 ("Respondent knew of or should have known of the Complainantís trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainantís EXPEDIA website.") Respondent very likely was aware of Complainantís trademark rights in NASCAR prior to registering the domain name at issue.

- 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. DaimlerChrysler Corporation v. Brad Bargman, ICANN Case No. D2000-0222, May 29, 2000 (noting that it was "unquestionable" that consumers would associate the domain name <dodgeviper.com> with DaimlerChrysler because the terms in the domain name were well-known brand names of DaimlerChrysler products). In short, Respondent registered the domain name in bad faith. Respondent had, at minimum, constructive notice of Complainantís trademark rights in the mark, but registered the domain name <nascarnowmag.com> in an attempt to capitalize on the enormous interest and goodwill Complainant has built over the years.

- Further, Complainant submits that Respondent has used the domain name in bad faith because it receives financial benefit based upon diversion of consumers to Respondentís website by using Complainantís well-known NASCAR mark in the domain name <nascarnowmag.com>. Examples of this bad faith use include the posting of a general offer to sell on the site for a minimum amount far in excess of its out of pocket costs associated with the domain name, and the presence of click-through third party advertising linked to the site.

- Complainant submits that Respondent has used the mark in bad faith in that it registered the domain name for the purpose of selling it in excess of at least five times Registrantís documented out-of-pocket costs directly related to the domain name. Respondent posted a general offer to sell the domain name <nascarnowmag.com> for no less than $550 US dollars on the website at that address, far in excess of its costs, which apparently include a $79 membership fee and a $12 annual fee for a domain name registered in 2001. The fee to transfer the domain is an additional $12. Attempting to profit by selling a domain name containing a trademark in which the Respondent has no legitimate interest has repeatedly been found sufficient evidence of bad faith use. See American Anti-Vivisection Society v. "Infa dot Net" Web Services, ICANN Case No. FA0009000095685, November 6, 2000 (general offer to sell to anyone, regardless of whether a price is specified, is evidence of bad faith).

∑ Respondent has also used the mark in bad faith by linking the website to click-through third party pornographic website advertisements. These advertisements pop up as the user tries to exit Respondentís website, leading to several additional advertisements. Complainant submits that Respondent profits based upon the number of users that click through the advertisements. See United Feature Syndicate, Inc. v. Mr. John Zuccarini, ICANN Case No. D2000-1449 (Panelist found bad faith in that Respondent "subjects users to multiple advertising/promotional sites and click through banner advertisements for his apparent financial gain"); and Toronto Star Newspapers Limited v. Virtual Dates Inc. ICANN Case No. D2000-1612, February 6, 2001 ("it can reasonably be presumed that respondent has entered into commercial agreements whereby he benefits financially from visitors to his site who are redirected to the pornographic website").

- Respondentís website includes no references to Complainantís mark, goods or services, so that it is apparent that Respondentís only purpose for using Complainantís mark in the domain name is to direct traffic to the website. In Toronto Star, the Panel held that the respondent was "taking a free ride on the goodwill and reputation of theÖtrademark" for financial gain by driving traffic to his site through use of anotherís trademark. Respondent here has done the same. By electing to register and then use <nascarnowmag.com> as his domain name, 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 web site.

- In the Bank of America case, the Panel also held that the contact information for Respondent, RMG Inc - BUY or LEASE by E-MAIL, constituted further evidence of bad faith in that it demonstrates that Respondent is primarily interested in profiting by selling or leasing the domain name to others. Complainant submits that Respondentís motives are no different now than they were when it registered the domain name <nationsbancmontgomery.com>.

Accordingly the Complainant requests that the Panel order that the domain name be transferred to the Complainant.

B. The Respondentsí assertions

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 4.a. requires the Complainant to make out three elements:

a). The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

b). The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

c). The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its numerous NASCAR marks in the US, and elsewhere. I conclude that the Complainant Ė as registered proprietor of the marks Ė has established the first requirement of this paragraph; that is, that it has rights in a relevant trademark.

The second requirement is that the domain name be identical or confusingly similar to the marks. I conclude that the domain name is confusingly similar to the Complainantís marks. The addition of "nowmag" to the Complainantís mark does not remove any confusion in the mind of the consumer. The overwhelming consumer impression of the domain name is of a descriptive site for "NASCAR NOW MAG", that is, todayís NASCAR magazine. Modern marketing techniques often include generics like "now" to give the impression that the product is contemporary, and the inclusion of "mag" will be read, as the Complainant suggests, simply as a contraction for "magazine". The domain name is therefore dependent on the initial NASCAR appellation, and the subsequent additions do not dispel the confusion.

The Complainant has therefore shown that it has rights in trademarks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant asserts, for a number of reasons, that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. Its main arguments are that the Respondent carries on no legitimate business at the domain name, the Respondent links to pornographic material at the domain name, and the fame of the Complainantís name leads to the presumption that the Respondent has no legitimate interests.

These arguments notwithstanding, in the absence of a Response I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:

"(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; or

(ii) you (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 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."

There is absolutely no evidence that any of the scenarios of Paragraph 4.c. apply here. The Complainantís marks rely on the invented word "NASCAR", and are extremely well-known throughout the world. It is unlikely that someone could establish a legitimate interest in any name that included the word "NASCAR." Though the principle may not apply to all decisions, where we have a well-known mark such as this, the burden is clearly upon the Respondent to establish its legitimate interest. The Respondent has not met its burden.

As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

On the issue of bad faith registration, the Complainant owns forty-one trademark registrations on the Principal Register of the United States, has registrations in numerous countries, and runs internationally-known sports entertainment. It beggars belief that the Respondent could have registered the domain name <nascarnowmag.com> while being unaware of the Complainantís reputation. Since the Respondent makes no attempt to refute this obvious implication, I conclude that the registration was in bad faith.

On the issue of bad faith use, the Complainant has also made out its burden. The Respondent is clearly using the confusion in the minds of consumers over the use of "NASCAR" to divert users for commercial gain. Evidence of this may be found in the click-through advertising on the site, especially since this advertising is pornographic. The presence of pornographic material of itself is not, in my opinion, sufficient to establish bad faith. However it is now well-known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques. On the basis of the evidence and in the absence of any Response, I conclude that the Complainant has made out bad faith use on the part of the Respondent.

I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain name <nascarnowmag.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: January 23, 2002