WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Autosales Incorporated, dba Summit Racing Equipment v. Peter Carrington dba Party Night, Inc.

Case No. D2003-0678

 

1. The Parties

The Complainant is Autosales Incorporated, dba Summit Racing Equipment, Akron, Ohio, United States of America, represented by Buckingham, Doolittle & Burroughs, LLP, United States of America.

The Respondent is Peter Carrington dba Party Night, Inc., Amsterdam, Netherlands.

 

2. The Domain Name and Registrar

The domain name at issue, <summmitracing.com>, is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on August 28, 2003, (electronic version) and on August 29, 2003, (hard copy). On August 29, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On September 4, 2003, and September 5, 2003, the Registrar transmitted by email to the Center its verification responses and confirmed that it was in receipt of the Complaint, it was the Registrar for <summmitracing.com> and the Respondent is listed as the registrant of <summmitracing.com>. Further, the Registrar provided contact details for the administrative, billing and technical contact and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied to the domain name at issue.

On September 8, 2003, the Center transmitted by e-mail to the Registrar a request for confirmation that the principal office of the Registrar is in Saarbruecken, Germany. On September 8, 2003, the Registrar transmitted by e-mail to the Center a confirmation that its principal office is in Bexbach, Germany.

In response to a notification of September 10, 2003, by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 11, 2003.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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"). The Complainant made the required payment to the Center.

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the administrative proceedings commenced on September 24, 2003. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 14, 2003. The Respondent was informed that if his response is not sent by that date, he will be considered in default. Further, the Respondent was informed that the Center will still appoint an Administrative Panel to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 16, 2003.

The Center appointed Markus S. Hellgren as the sole panelist in this matter on October 27, 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 paragraph 7 of the Rules. The Panel was required to forward its decision to the Center by November 10, 2003, in accordance with paragraph 15 of the Rules.

The language of the proceeding is English.

 

4. Factual Background

The Complainant is the owner of numerous trademark and service mark registrations consisting of or incorporating the word SUMMIT. The Complainant owns the following US Trademark Registrations:

United States Trademark Registration No. 1,979,695, registration date June 11, 1996, SUMMIT RACING EQUIPMENT, in International Class 42, based on an actual use in commerce dating back to 1968.

United States Trademark Registration No. 2,528,907, registration date January 15, 2002, SUMMIT RACING EQUIPMENT, in International Classes 7, 9, 12 and 25, based on an actual use in commerce dating back to either May 1985 or March 1982 depending on the class.

United States Trademark Registration No. 1,741,692, registration date December 22, 1992, SUMMIT RACING EQUIPMENT SPEEDCARD, in International Class 36, based on an actual use in commerce dating back to February 6, 1992.

United States Trademark Registration No. 2,547,445, registration date March 12, 2002, SUMMITRACING.COM, in International Class 36, based on an actual use in commerce dating back to February 2000.

United States Trademark Registration No. 2,618,328, registration date September 10, 2002, SUMMIT RACING & Design, in International Class 35, based on an actual use in commerce dating back to March 1999.

United States Trademark Registration No. 2,713,558, registration date May 6, 2003, SUMMIT RACING & Design, in International Class 35, based on an actual use in commerce dating back to April 17, 1984.

United States Trademark Registration No. 2,741,865, registration date July 29, 2003, SUMMIT RACING SPORT COMPACT NATIONALS, in International Class 35, based on an actual use in commerce dating back to July 1999.

The Complainant is the owner of trademark registrations for the mark SUMMIT in Austria, Australia, Benelux, Canada, Denmark, Finland, France, Germany, Great Britain, Greece, Ireland, Italy, Mexico, Norway, New Zealand, Portugal, South Africa, Sweden, Switzerland and Venezuela. Further, the Complainant is the owner of a Community Trademark and a Brazilian trademark application for the mark SUMMIT.

Further, the Complainant asserts that it has Common law trademark rights in the mark SUMMIT SPEEDCARD, based on actual use in commerce dating back at least two years for credit services.

The Complainant is the owner of the domain name <summitracing.com>.

On April 6, 2002, the Respondent registered the domain name <summmitracing.com> with Key-Systems GmbH.

 

5. Partiesí Contentions

A. The Complainantís case

Identical or Confusingly similar

The Complainant contends that the domain name <summmitracing.com> is confusingly similar and phonetically identical to the trademarks in which the Complainant has exclusive rights. The domain name <summmitracing.com> is almost verbatim identical or at a minimum, confusingly similar to the SUMMIT, SUMMIT RACING, SUMMIT RACING EQUIPMENT, SUMMIT RACING EQUIPMENT SPEEDCARD and SUMMITRACING.COM marks of the Complainant, an entity which has both registered and common law trademark rights in some of the marks going back as far as 1968.

Rights or Legitimate Interests

The Complainant contends that the Respondent is not known to have any legitimate business interest in the marks, and apparently is engaged in the business of registering domain names that infringe upon otherís trademarks and redirecting web users to the Respondentís pornographic website.

Registration and Use in Bad Faith

The Complainant contends that the Respondent knew or should have known that the domain name would easily be mistaken for Summit Racing Equipment, the Complainant in this case.

Peter Carrington and Party Night, Inc. have engaged in a pattern of conduct of registering domain names that infringe upon otherís trademarks. Moreover, the Respondent has been found on several occasions to have been acting in bad faith, including in a proceeding involving the Complainant, namely Autosales Incorporated v. Peter Carrington, WIPO Case No. D2002-1131. In this respect, the Complainant also refers to the following cases: NAF Case No. FA02007000116764, NAF Case No. FA0208000118311, NAF Case No. FA0207000115040, NAF Case No. FA0208000118314, NAF Case No. FA0207000115078 and NAF Case No. FA0208000122207.

Further, the Complainant contends that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. The Respondent has engaged in a pattern of such conduct as evidenced by the large number of domain name registrations identified above, in excess of any reasonable legitimate business goal or objective.

When Internet users mis-type the domain name of the legitimate Summit Racing website and enters the domain name at issue into their browser, they are redirected to a commercial pornographic website, namely "www.hanky-panky-college.com" which further links to other pornographic and gambling websites. The Internet users are further confronted with pop-under banner advertisements which continue to reappear to the consternation of legitimate users.

As a result of Respondentís activities, Internet users may mistakenly enter the domain name at issue instead of their obviously intended location. Additionally, when additional windows pop up containing advertisements for third-party goods and services, these Internet users are likely to be misled into believing that the Complainant sponsors or endorses these advertisers and their goods and services.

Respondentís registration and use of the domain name at issue meets the bad faith element set forth in section 4(b)(iv) of the Policy. Specifically, the Respondent uses the domain name at issue to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainantís marks as to the source and/or endorsement of Respondentsí pop up websites and the advertisements of the services offered at those sites.

The Complainant further contends that the Respondentís registration and use of the domain name at issue meets the bad faith element set forth in section 4(b)(iii) of the Policy. By attracting Internet users away from Complainantís websites to their own websites or websites of advertisers of the Respondent, the Respondent has indicated that the registration and use of the contested domain names were primarily for the purpose of disrupting the business of the Complainant.

B. Respondent

The Respondent did not file a Response.

 

6. Discussion and Findings

The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative proceeding, and that the Respondentís failure to submit a Response is not due to any omission by the Center.

In view of the Respondentís failure to submit a Response, the Panel shall decide the dispute based upon the Complaint according to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate according to paragraph 14(b) of the Rules.

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

i) that Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of numerous trademark and service mark registrations consisting of or incorporating the mark SUMMIT, including the service mark SUMMITRACING.COM. The domain name at issue consists of the word "summmit" followed by the generic word "racing" and the gTLD ".com".

First of all, the gTLD ".com" is of no significance when determining whether or not a domain name is identical or confusingly similar to a trademark or service mark.

Further, the fact that a domain name wholly includes a Complainantís mark is sufficient to establish confusing similarity, despite the addition of generic words, such as e.g. "racing". This has been held by numerous prior panels. See e.g. Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102, and EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.

This is a typical case of "typosquatting" where the domain name at issue is one letter more than or different from the Complainantís mark. The only difference between the word "summmit" and the Complainantís trademark and service mark SUMMIT is the purposeful misspelling, created by the addition of an "m".

Accordingly, the Panel finds that the domain name at issue is confusingly similar to the Complainantís registered trademark and service mark.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a 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 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.

The Complainant has shown that the Respondent uses the domain name at issue in connection with redirecting Internet users to a commercial pornographic website, namely "www.hanky-panky-college.com" which further links to other pornographic and gambling websites. The Respondentís use does not amount to a right to or legitimate interest in the domain name at issue and the Complainant has thereby made a prima facie showing that Respondent has no rights to or legitimate interests in the domain name at issue. See e.g. Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860.

The Complainant has shown that the Respondent has engaged in a pattern of conduct of registering domain names that are intentional misspellings of third party trademarks. The Respondent has been found to be a typosquatter in several domain name disputes, including in a dispute concerning the domain name <summitracin.com> involving the Complainant. This is a clear indication that the Respondent has no rights to or legitimate interests in the domain name at issue.

A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. See e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.

In this case, the Respondent has failed to file a Response and to meet that burden.

Accordingly, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four nonexclusive criterions for Complainant to show bad faith registration and use of a domain name:

(i) circumstances indicating that the respondent has registered or the respondent has 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 the respondentís 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 the respondent 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 website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondentís website or location or of a product or service on the respondentís website or location.

In addition to these criterions, other factors alone or in combination can support a finding of bad faith.

The Complainant contends that the Respondent has registered the domain name at issue primarily for the purpose of disrupting the business of the Complainant and refers to paragraph 4(b)(iii) of the Policy. The term "competitor", as provided in paragraph 4(b)(iii) of the Policy, has been interpreted differently by Administrative Panels. In Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, the Panel held that the term "competitor" should not be restricted to a commercial or business competitor but should include a person who acts in opposition to another. In Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772, the Panel held a more restrictive view, namely that "a respondent can "disrupt the business of a competitor" only if it offers goods or services that can compete or rivals with the goods or services offered by the trademark owner".

In view of the fact that paragraph 4(b) of the Policy is not exhaustive, the Panel agrees with the Panel in Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.) v. Tuyap /Kurumsal.net/Koznet Kurumsal Internet Hizmetleri, WIPO Case No. D2003-0442, "that it should be possible to apply its provisions by analogy to situations that differ only slightly from the situations described in this paragraph". However, in this case the Complainant has not established that it is a "competitor", or a party that differs only slightly from the term "competitor", to the Respondent. The Panel therefore concludes that paragraph 4(b)(iii) of the Policy does not apply.

Further, the Complainant contends that the Respondent has registered the domain name at issue in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct. There are therefore two questions: (1) do the circumstances suggest that the Respondent registered the domain name with the intent to obstruct such action by the Complainant? and (2) has the Respondent engaged in a pattern of such conduct? The Panel deems that the Respondent registered the misspelled domain name with the intent to profit from the Complainantís trademarks and service marks rather than to prevent the Complainant from reflecting its mark in a corresponding domain name. The misspelled domain name at issue does not prevent the Complainant from reflecting its exact mark as a domain name. Accordingly, the Panel finds that paragraph 4(b)(ii) of the Policy does not apply.

However, the Respondent and the Complainant have previously been involved in a dispute concerning the domain name <summitracin.com>, WIPO Case No. D2002-1131. This case was decided in favor of the Complainant. Considering this, it is obvious that the Respondent was aware of the Complainantís trademark and service mark when registering the misspelled domain name at issue. This fact is a clear indication that the domain name at issue has been registered and used in bad faith.

Further, the Respondent is engaging in a practice called "typosquatting". The Panel agrees with the Panels in AltaVista Company v. Saeid Yomtombian, WIPO Case No. D2000-0937, and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, that "The use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainantís mark".

In addition, the many arbitral decisions rendered against the Respondent show that his behavior is part of an overall pattern of "typosquatting". The Respondentís practice of profiting from third party trademarks and service marks is a clear indication of his bad faith registration and use of the domain name at issue.

Further, the Respondent is using the domain name at issue in order to divert Internet users to a pornographic website located at "www.hanky-panky-college.com". Such use is considered to be evidence that the domain name has been registered and used in bad faith according to paragraph 4(a)(iii) of the Policy. See e.g. Club Monaco Corporation v. Charles Gindi, WIPO Case No. D2000-0936; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022. The Panel stated in Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022: "Preliminary, it is commonly understood, under WIPO case law, that, whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith".

Accordingly, the Panel finds that the domain name at issue was registered and is being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <summmitracing.com> be transferred to the Complainant.

 


 

Markus S. Hellgren
Sole Panelist

Date: November 6, 2003