WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association for Stock Car Auto Racing, Inc. v. Razor Gator Inc.
Case No. D2002-0788
1. The Parties.
The parties to this dispute are:
Complainant: National Association for Stock Car Auto Racing, Inc., a corporation organized under the laws of Florida with its principal place of business located in Daytona, Florida, United States of America.
Respondent: Razor Gator Inc., whose address is Beverly Hills, California 90210, United States of America.
2. The Domain Name and Registrar
The domain name at issue is: <nascartickets.com>.
The Registrar is: Tucows, Inc. located in Toronto, Canada.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on August 21, 2002, via email and in hard copy on August 26, 2002. On August 23, 2002, the Center sent the Complainant an Acknowledgement of Receipt of the Complaint.
The Center sent the Registrar a Request for Registrar Verification via email. On August 26, 2002, the Registrar sent, via email to the Center, a Registrar Verification Response confirming that the domain name at issue is registered with the Registrar and that the Respondent is the current registrant of that domain name.
The Center completed a Formal Requirements Compliance Review, 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 Name Dispute Resolution Policy (the Uniform Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
Payment to the Center in the required amount was made by the Complainant.
On August 27, 2002, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via post/courier (with enclosures) and via facsimile and e-mail (complaint without attachments) and set a deadline of September 16, 2002, by which the Respondent could file a Response to the Complaint.
On September 19, 2002, when there was no Response by Respondent to the Complaint, the Center transmitted a Notification of Respondent Default to the Respondent via facsimile and e-mail.
On September 30, 2002, pursuant to Complainant's request to have the dispute decided by a single-member Administrative Panel, the Center appointed David Sandborg as Panelist.
4. Factual Background
Complainant is widely known as the principal organization for regulating, governing, and sanctioning stock car automobile racing. Each year, Complainant sanctions over 2,000 races in 39 states across the US.
Complainant has forty-one US federal trademark and service mark registrations and eight pending applications in the United States that incorporate its NASCAR mark.
In addition, Complainant has registered and/or has pending applications for its NASCAR marks in a number of other countries.
Complainant has used its NASCAR mark in connection with stock car racing since
at least 1948 and began obtaining US federal Principal Registrations for its mark in 1966.
The NASCAR marks are registered in connection with a wide range of goods and services in addition to Complainantís primary race sanctioning services. The family of NASCAR trademarks and service marks includes such names as NASCAR; NASCAR INTERNATIONAL: NASCAR LIVE, NASCAR TODAY, INSIDENASCAR, etc.
Complainant licenses use of its mark to more than two hundred (200) licensees, some of whom have exclusive licenses with Complainant for certain categories of goods and services.
In connection with its race sanctioning services Complainant has never authorized Respondent to use the NASCAR marks.
Complainant operates its website at "www.nascar.com". The domain name was registered on December 28, 1995.
The Whosis data for Respondentís <nascartickets.com> domain name indicates that Respondent registered that domain name in November 1996.
Respondentís website indicates that it is an independent ticket broker and offers to sell tickets to the NASCAR Winston Cup races and to the Indy 500 race.
Complainant sent a cease and desist letter dated June 25, 2002, to the administrative and technical contacts listed in the Whois information for the domain name.
Complainant has received no response to that letter.
5. Parties Contentions
Complainant alleges the following, among other things, in support of its Complaint:
a) The domain name at issue is confusingly similar to Complainantís mark NASCAR because the domain name <nascartickets.com> incorporates Complainants NASCAR mark in full, adding only the descriptive term "tickets". The addition of the word "tickets" to the NASCAR mark misleads consumers into believing that Complainant has authorized Respondent to sell tickets to its events or that Complainant is affiliated with Respondent.
b) Respondent has no rights or legitimate interests with respect to the domain name at issue because Complainant has used its mark in relation to stock car racing since at least 1948 and began obtaining US federal Principal Register registrations for its mark in 1966. Under US Trademark law such registration is considered prima facie evidence of the holderís exclusive right to use the mark. Moreover, several of Complainantís registrations have attained incontestable status under the US Trademark Act and are therefore considered conclusive evidence of Complainantís exclusive right to use its mark, NASCAR. Accordingly, Respondent has no rights of its own in the mark NASCAR.
Moreover, Respondent is not making legitimate non-commercial or fair use of Complainantís NASCAR mark. Respondent uses the domain name for commercial gain. The domain name resolves to a website offering to sell tickets to NASCAR sanctioned events at inflated prices.
c) The domain name was registered and is being used in bad faith because, among other things, there is no reasonable basis for Respondent to assert that it was not aware that Complainant was the owner of the NASCAR mark prior to Respondentís registration and use of the domain name <nascartickets.com>. A single registration on the Principal Register is constructive notice of the registrantís claim of ownership under US trademark law. Accordingly, a subsequent domain name registrant is presumed to have notice of the trademark registrantís prior rights in the mark. In addition, Complainant contends that its extensive international use of the NASCAR mark over 50 years constitutes additional evidence that Respondent was aware of Complainantís rights in the mark. Complainant contends that Respondent is using the famous NASCAR mark to attract consumers to Respondentís website in order to sell them tickets for financial gain.
Moreover, given the fact that part of Respondentís business is to sell tickets to NASCAR events, it is untenable that Respondent was unaware of Complainantís NASCAR mark prior to registering and using the domain name at issue.
Respondent has failed to submit a Response in this proceeding.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel 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."
Where a Respondent has failed to submit a Response to the Complaint, Paragraph 5(e) provides that the Panel shall decide the dispute based upon the complaint, in the absence of exceptional circumstances. The Panel finds no exceptional circumstances in this case.
Paragraph 4 (a) of the Policy requires that the following three elements be alleged and proven in order for a Complainant to prevail:
a. Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
b. Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint; and
c. Respondentís domain name has been registered and is being used in bad faith
The Panel finds that the Complainant has satisfied these requirements and is entitled to prevail in this proceeding for the following reasons:
Identical to or Confusingly Similar
Complainant has established in this proceeding its rights to the NASCAR mark through numerous registrations and use over a significant period of time. Respondent has added a generic, descriptive word ("tickets") to the NASCAR mark. The Complainant has cited a number of decisions under the Policy which have held that the addition of a generic term does not avoid confusing similarity for the purposes of Paragraph 4(a)(i) of the Policy.
The Panel finds that <nascartickets.com> is confusingly similar to Complainantís NASCAR mark.
Rights to or Legitimate Interests
Complainant has established its rights to the NASCAR mark through numerous registrations and use over a significant period of time. On the other hand, Respondent has failed to deny that it has no rights nor any legitimate interests in respect of the domain name at issue. Prior Panel decisions have found that a Respondentís failure to respond can be taken as an admission that it has no rights or legitimate interests in the domain name. Moreover, Respondent is not making a legitimate non-commercial or fair use of the domain name but, rather, is using it with the intent to direct consumers to Respondentís website for its commercial gain.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four examples of bad faith which, although not exclusive, are evidence of registration and use in bad faith. I find that Paragraph 4(b)(iv) of the Policy is generally applicable to this dispute. Paragraph 4(b)(iv) provides that it shall be evidence of the registration and use of a domain name in bad faith where, by using the domain name the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website or a product or service on the website.
Respondent has used the domain name at issue to attract potential ticket buyers to its website, to sell them tickets, and to make a profit. The use of the domain name creates a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website and of a product or service on Respondentís website.
The Panel finds that Respondent has registered and used the domain name in bad faith.
For all of the above reasons, the Panel finds that the Complainant has proven the elements necessary to prevail in this proceeding, i.e. that the domain name at issue is confusingly similar to the mark in which complainant has rights, that the Respondent does not have rights or legitimate interests in respect of the domain name, and that the Respondent registered and used the domain name in bad faith.
Therefore, the request of Complainant that the domain name be transferred to Complainant is granted.
Dated: November 5, 2002