WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autosales Incorporated v. Peter Carrington
Case No. D2002-1131
1. The Parties
The Complainant is Autosales Incorporated dba Summit Racing Equipment of Akron, Ohio, United States of America, represented by Mr. Louis F. Wagner of the United States of America.
The Respondent is Peter Carrington dba Party Night Inc., of Amsterdam, Netherlands.
2. The Domain Name and Registrar
2.1 The domain name that is the subject matter of this Complaint is <summitracin.com>.
2.2 The registrar with which the domain name is registered is Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2002. On December 13, 2002, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On the same day, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2003. The Respondent was informed that if his Response is not received by that date, he will be considered in default. The Center will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on January 10, 2003.
The Center appointed Dr. V. K. Agarwal as the sole panelist in this matter on January 15, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel is required to give its decision by January 29, 2003.
4. Factual Background
From the Complaint and the various annexures to it, the Administrative Panel has found the following facts:
The Complainant is the manufacturer of a variety of goods including racing and after market accessories for land vehicles, high performance automotive equipment and accessories, namely, engines, clutch pilots, shock absorbers, etc. The Complainant is the registered owner of the trademark "Summit" for the aboveand other products. The trademark "summit" has been registered by the Complainant for various goods in different years. For the first time, the said trademark "Summit" was registered in 1968, for goods and services in International Class 042. Similarly, for goods in International Class 035, the trademark "Summit" was registered in 1985. Thus, the Complainant holds 12 registration certificates in the name of the trademark "Summit" from the United States Patent and Trademark Office. The mark is pending in Austria, Australia, Brazil, Benelux, Canada, and many other countries.
Respondentís Identity and Activities
The Respondent did not reply to the Complainantís contention. Hence, the Respondentís activities are not known.
5. Partiesí Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that he is the owner of the registered trademark "Summit" in respect of Summit Racing Equipment. A combination of the words "summit" and "racing" gives the domain name <summitracin.com>. Further that, the domain name <summitracin.com> registered by the Respondent on April 6, 2002, is phonetically identical and confusingly similar to the "Summit" trademark registered by the Complainant. It could easily be mistaken for Summit Racing Equipment of the Complainant. When users mis-type the domain name of the legitimate Summit Racing web site, and mistakenly type that of the cybersquatter, they are redirected to a commercial pornographic web site, namely "www.hanky-panky-college.com" which further links to other pornographic and gambling web sites.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <summitracin.com> as the Respondent is known as "Peter Carrington". Further that the Respondent is not making a legitimate non-commercial or fair use of the said domain name. The Respondent registered the domain name for the sole purpose of selling the same.
Regarding the element at (iii), the Complainant contends that the main object of registering the domain name <summitracin.com> by the Respondent is to sell it to the Complainant or to the general public.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has a right; and
(ii) The Respondent has no right or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name <sumitracin.com>. The Complainant is the registered owner of the trademark Summit in many countries, including the United States Patent and Trademark Office. The first six letters, "Summit" have been used in the domain name of the Respondent. It indicates a relationship between the Complainantís mark and the domain name in question. There is no doubt that the domain name is confusingly similar to the trademark of the Complainant. The Administrative Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondentís 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial 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 Respondent has not filed any response in this case. It is therefore presumed that the above circumstances do not exist in this case and the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221. "Summit" is the registered trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating the said words and that nobody will use the words "Summit" unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 the Respondentís web site or location or of a product or service on its web site or location.
The contention of the Complainant is that the present case is covered by the first circumstance. The Federal Express has informed that the Respondent Peter Carrington is unknown at the address indicated in the documents. It is ample proof of the fact that the Respondent has concealed its true identity. Furthermore, Respondentís domain name resolves to a pornographic web site that tarnishes the goodwill and reputation of the Complainant. The Administrative Panel agrees with the said contention of the Complainant. Further, the said web site has not been activated by the Respondent until the date of filing of the Complaint. Thus, "inaction" or "passive" holding of a domain name amounts to the registration and se of the domain name in "bad faith".
In the light of the foregoing findings, namely, that the domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith, the Administrative Panel directs that the domain name <summitracin.com> be transferred to the Complainant.
V. K. Agarwal
Dated: January 20, 2002