WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Speedway SuperAmerica LLC v. Jim Black

Case No. D2002-0475

 

1. The Parties

The Complainant is Speedway SuperAmerica LLC, a limited liability company of Delaware, with its principal place of business in Enon, OH, United States of America.

The Respondent Jim Black is an individual, who, according to the Registrar, has a business address at Accutel, in Fort Worth, TX, United States of America.

 

2. The Domain Names and Registrar

The domain names at issue are <speedwaycallingcard.com> and <speedwaycard.com> ("the Domain Names"). The registrar with which the Domain Names are registered is GoDaddy Software,, Inc. ("the Registrar"), located in Scottsdale, Arizona, United States of America.

The Registrar provided contact details for the Respondent.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís Complaint by email on May 20, 2002, and in hardcopy on May 23, 2002. On May 23, 2002, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint. After a request from the Center, the Complainant submitted the original signed hardcopy to the Center on June 5, 2002.

On May 23, 2002, the Center sent the Registrar a Request for Registrar Verification, and the Registrar transmitted to the Center via e-mail a Registrar Verification Response confirming that the Domain Names are registered with the Registrar and that the Respondent Jim Black is the current registrant of the Domain Names.

The Center completed a Formalities Compliance Review on June 7, 2002, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Dispute Resolution Policy ("the Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the WIPO Supplemental Rules"). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the WIPO Supplemental Rules.

On June 7, 2002, the Center transmitted to the parties, with copies to the Registrar and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of June 27, 2002, by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent by courier, facsimile and email at the addresses provided by the Complainant and the Registrar.

No Response has been filed with the Center by Respondent. On July 3, 2002, the Center sent the parties a Notification of Respondent Default, notifying Respondent at the email addresses provided by the Registrar. In the Notification of Respondent Default, the Center advised the parties that it would proceed to appoint the Administrative Panel.

In view of the Complainantís request for a single arbitrator, the Center invited Dana Haviland to serve as the sole panelist. On July 15, 2002, after having received a Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date, appointing the aforementioned panel. The Projected Decision Date was July 29, 2002. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

Complainant is the owner of the following trademarks: SPEEDWAY FUEL CARD (Reg. No. 1,987,536, registered: July 16, 1996); THE CONVENIENCE STORES OF SPEEDWAY (Reg. No. 1,867,322, registered: December 13, 1994); SPEEDWAY (Reg. No. 1,592,374, registered: April 17, 1990); SPEEDWAY and Design (Reg. No. 1,530,103, registered: March 14, 1989); S SPEEDWAY (Reg. No. 1,530,104, registered: March 14, 1989); S SPEEDWAY and Design (Reg. No. 1,527,706, registered: March 7, 1989); SPEEDWAY (Reg. No. 1,168,689, registered: September 8, 1981); SPEEDWAY (Reg. No. 1,167,946, registered: September 8, 1981); and SPEEDWAY (Reg. No. 816,870, registered: Oct. 18, 1966) (herein collectively referred to as the "SPEEDWAY" marks). Complainant is also the owner of the following SPEEDY marks: SPEEDY CALL (Ser. No. 78/117,349, filed: March 25, 2002); SPEEDY NET (78/117,354, filed: March 25, 2002); S SPEEDWAY SPEEDY WASH and Design (Ser. No. 78/088,344, filed: October 15, 2001); SPEEDY CASH (Ser. No. 76/227,588 filed: March 16, 2001) (hereinafter collectively referred to as "SPEEDY" marks).

Complainant has been using SPEEDWAY marks in connection with gasoline service stations and related goods and services since 1935. Today, Complainantís SPEEDWAY and SPEEDY marks are used in connection with convenience stores, credit card services, calling card services, e-commerce sites as well as service station services, gasoline, motor oil and other goods and services. Complainant operates over 2000 stores in the United States under the SPEEDWAY name and is the third largest chain of company-owned and operated gasoline and convenience stores. SPEEDWAY is also incorporated into Complainantís trade name, SPEEDWAY SUPERAMERICA LLC. Complainant has a website at "www.speedway.com".

Since 1995, Complainant has used its SPEEDWAY marks on a variety of cards, including phone cards, prepaid cards, gift cards, and VISA credit cards. The calling cards bearing the SPEEDWAY mark were first introduced in 1995 and, while the card and program have been updated and revised, the cards have remained in continuous use since commencement.

According to the Complaint, Complainant created and adopted the SPEEDWAY marks, and later the SPEEDY marks, as unique identifiers for its goods and services. As part of its marketing and commercial activities, Complainant has developed and extensively used its SPEEDWAY marks, and has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising and protecting its SPEEDWAY marks and its related website.

The Respondent registered the Domain Names with the Registrar on February 19, 2002. The <speedwaycard.com> website offers telephone calling cards for sale. The pages have a banner at the top with the words "Speedway Card" but the text refers to "the AccuLinQ cards" and the contact information for the site is for AccuLinQ Calling Card Corporate Headquarters at an address in Fort Worth, Texas, which is the same address as the Registrar has for Respondent. It appears that there is currently no website for the Domain Name <speedwaycallingcard.com>. Respondent has filed no Response to the Complaint to refute its allegations or to provide any defense or further information.

 

5. Partiesí Contentions

(a) Complainantís Contentions

Complainant contends that the Domain Names are identical or confusingly similar to the dominant portion of the Complainantís well-known registered SPEEDWAY and SPEEDY trademarks, and that the additional generic words "calling card" or "card" alone, do nothing to obviate any confusion. Because Complainant offers its Speedway brand "calling cards" as well as other "cards," at its convenience stores as well as over the Internet, consumers encountering the Domain Names <speedwaycallingcard.com> or <speedwaycard.com> would assume a connection or association between the website and Complainant.

Complainant further contends that Respondent has no right or interest in the Domain Names, noting that Respondent does not otherwise use Speedway as a business name, but does business under variants of the names AccuTel and AccuLinQ.

Complainant contends that Respondent has registered and is using the Domain Names in bad faith, intending to either: (1) profit from the sale of the Domain Names by selling them to Complainant; (2) profit from the sale of the Domain Names by selling them to a competitor of Complainantís so that the competitor could divert sales; (3) develop his own web site(s) using Complainant's trademarks, with the intent to divert customers away from Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of Complainant; and/or (4) prevent Complainant from registering these domain names for its own use in its business.

In particular, Complainant asserts that it seems likely that Respondent's goal in registering the Domain Names is to develop its own web sites that will divert sales from Complainant, or otherwise trade on the goodwill Complainant has developed generally over more than 60 years of use, including more than five years of use in connection with card services, including calling card services and other SPEEDWAY branded cards. Specifically, Complainant notes that Respondentís <speedwaycard.com> web site is offering calling cards that show Complainantís SPEEDWAY trademark and directly compete with calling cards offered by Complainant. Complainant asserts that presumably Respondent will create a similar web site at <speedwaycallingcard.com> for the same purpose.

Complainant also notes that Respondentís address is in Texas. Complainantís trading area includes Texas, so that it is likely that Respondent would have actual knowledge of Complainantís SPEEDWAY marks, as well as the constructive notice afforded by Complainantís registrations.

(b) Respondentís Contentions

No Response was filed.

 

6. Discussion and Findings

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- "that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith."

(a) Identity or Confusing Similarity of the Domain Names and Trademark

The evidence shows that the Domain Names <speedwaycallingcard.com> and <speedwaycard.com> registered by the Respondent are confusingly similar to the Complainantís SPEEDWAY marks.

(b) No Legitimate Interest in the Domain Names

Under the Policy, a party may demonstrate its right or interest in a domain name in any of the following ways:

(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 bonafide 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 no evidence that Respondent has been commonly known by either of the Domain Names, nor any evidence of noncommercial or fair use without intent for commercial gain.. Although the Respondentís <speedwaycard.com> uses the Domain Name in connection with an offering of goods and services, the offering cannot be said to be "bona fide" nor "before any notice of the dispute." Respondent had constructive, if not actual, notice of the Complainantís registered SPEEDWAY marks and chose to use the mark in its Domain Names for products directly competing with those of Complainant. Respondent has failed to file a Response providing the Panel with any evidence of the bona fide nature of its use of the Domain Names. The Panel finds that the evidence is sufficient to show that the Respondent has no legitimate right or interest in the Domain Names.

(c) Bad Faith Registration and Use of the Domain Names

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":

"(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 Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."

There is no evidence of any attempt by Respondent to sell the Domain Names to the Complainant or a competitor, no showing of a pattern of conduct by Respondent to prevent the Complainant from using its mark in a domain name, nor any evidence of intent to disrupt the business of a competitor. The evidence is sufficient, however, to support an inference of bad faith registration and use of the Domain Names to attract Internet users to Respondentís <speedwaycard.com> website and potential <speedwaycallingcard.com> website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís website(s), products and services.

 

7. Decision

For the foregoing reasons, it is the decision of the Panel that the Complainant has satisfied its burden of proving the essential elements of a claim under Paragraph 4(a) of the Policy, and that the Complainantís claim for transfer of the Domain Names <speedwaycallingcard.com > and <speedwaycard.com> is therefore granted.

 


 

Dana Haviland
Sole Panelist

Dated: July 31, 2002