WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Sports Inc. v. Acme Internet Group, WhoisGuard
Case No. D2007-1631
1. The Parties
The Complainant is Advanced Sports Inc., Philadelphia, Pennsylvania, United States of America, represented by Morgan, Lewis & Bockius, LLP, United States of America.
The Respondents are Acme Internet Group, Chicago, Illinois, United States of America, and WhoisGuard, Westchester, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <seracing.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2007. Initially, The Complainant named Acme Internet Group as the Respondent.1 On November 7, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 7, 2007, eNom transmitted by email to the Center a response indicating that WhoisGuard was listed as the registrant and providing the contact details.2 In response to a notification by the Center that the current registrant listed by eNom was WhoisGuard, the Complainant filed an amendment to the Complaint on November 28, 2007, adding WhoisGuard as a Respondent. The Center verified that the Complaint together with the amendment to 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 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2008. The Response was filed with the Center on January 1, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on January 18, 2008. 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.
4. Factual Background
The Complainant manufactures bicycles, including road, mountain and “bicycle motorcross” or “BMX” bikes. The Complainant is the owner by assignment of U.S. Registration. No. 2,216,132 for the mark SE RACING, issued on January 5, 1999 by the United States Patent and Trademark Office (USPTO). The Complainant obtained rights, title and interest in the SE RACING mark when it acquired the business of SE Racing in August 2002, and sells BMX bikes in the United States and elsewhere.3
The Complainant promotes its BMX bikes on its website at “www.sebmx.com”, as well as in print media and sponsored events. According to the Complainant, total reported sales of SE RACING bikes and accessories for its fiscal 2006 year approached $1,000,000.00 (United States dollars).
According to the domain name registrar eNom’s WHOIS records, the disputed domain name was initially registered on October 22, 2001, and the current registrant is listed as WhoisGuard, ostensibly a privacy protection service. As of October 29, 2007, the day before filing of the Complaint, eNom’s WHOIS records listed Acme Internet Group as the prior domain name registrant. Archived web pages maintained at “www.archive.com” indicate that from November 1, 2001 through June 29, 2007 the disputed domain name resolved to web page that was noted to be “in development”, and which prominently displayed the SE RACING mark and logo.4
The Complainant sent a cease and desist letter Respondent Acme Internet Group on September 20, 2007. Subsequently, the SE RACING mark and logo was removed from the seracing.com web page and replaced with Nissan’s NISMO SER logo, with the website header reading “Nissan SE Racing Parts”. Later, nearer in time to the filing of the Complaint, the <seracing.com> was used as a landing site, with “sponsored searches” and links to third party websites offering tickets to various sporting and racing events.
5. Parties’ Contentions
The Complainant asserts exclusive rights in the trademark SE RACING, and contends that the disputed domain name <seracing.com> is identical and confusingly similar to its mark. According to the Complainant, its SE RACING mark is well known and famous in the United States, and the Respondent would have known or at least had constructive notice of the SE RACING mark prior to registering the disputed domain name, which appropriates the Complainant’s mark in its entirety.
The Complainant contends that the Respondent5 lacks rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services, and any claim by the Respondent to be making a legitimate non-commercial or fair use of the disputed domain name is pretextual. The Complainant contends that the Respondent is using the disputed domain name in order to create initial interest confusion and divert Internet traffic to the Respondent’s website, and that the Respondent has used the SE RACING mark as a meta-tag to achieve a high-level placement in search engine results for “SE Racing”.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant also asserts that the Respondent has committed “cyberflight” as evidenced by the transfer of the disputed domain name from Acme Interest Group to WhoisGuard following the filing the Complaint.
The Response is submitted by an individual identifying himself as Bryan Sluggo, who indicates that the Acme Internet Group consists solely of him and is his hobby. According to the Respondent, he registered the disputed domain name on October 22, 2001, to use with a fan based website about SE Racing, a company which the Respondent maintains went out of business in October 1999. The Respondent claims to be a BMX enthusiast and bike owner for more than 25 years, and that he registered the disputed domain name to set up a community where BMX enthusiasts could meet, share and interact about a company “we all enjoyed which had gone ‘OUT OF BUSINESS’”.
The Respondent contends that the mark was not being used in 2001 when he registered the disputed domain name, and further maintains that the Complainant lacks trademark rights in SE RACING. According to the Respondent, the Complainant has abandoned the SE RACING mark, replacing it with the SE BIKES mark. The Respondent claims legitimate rights in the disputed domain name based on its use with a fan based website. According the Respondent, during the more than six years he has owned the domain name, hundreds of people have signed up for a mailing list and “many others” have submitted photos of BMX bikes.
The Respondent claims that he has never profited in any way from the disputed domain name and has never tried to mislead or divert Internet users from another site.
According to the Respondent, the landing site referred to by the Complainant was posted by the domain registrar, eNom, for a brief time when the Respondent renewed the registration of the disputed domain name. The Respondent also denies any “cyberflight”, maintaining that the domain name registration merely was recently renewed along with the WhoisGuard privacy protection on the account.6
The Respondent also contends that the Complainant has engaged in reverse domain name hijacking, in an effort to capitalize on the “original companies [sic] pioneering and goodwill for commercial profit.”
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) 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
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <seracing.com> is identical and confusingly similar to the Complainant’s registered SE RACING mark. For purposes of paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Cafe, WIPO Case No. D2000-0068.
The Respondent’s argument that the Complainant does not have trademark rights in SE RACING is untenable. The Complainant beyond question has established such rights. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Further, the Complaint and its Annexes provide indisputable evidence of the Complainant’s use of the SE RACING mark, despite the Respondent’s claims to the contrary.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, the Complainant is required to make a prima facie showing under paragraph 4(a)(ii) of the Policy in order to shift the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name under paragraph 4(c). The Panel notes that the disputed domain name is identical to the Complainant’s mark. It is uncontroverted that Respondent was not authorized to use the SE RACING mark or to register a domain name corresponding to the mark. Nevertheless, prior to receiving the Complainant’s cease and desist letter, the Respondent used the disputed domain name to divert Internet users to a website prominently displaying the Complainant’s SE RACING mark and logo. While the Respondent removed the Complainant’s SE RACING mark and logo from his website after receiving the Complainant’s notice letter, the Respondent persists in using the disputed domain name – which incorporates the Complainant’s mark in its entirety – to attract Internet visitors to his website.
The Panel is persuaded that a prima facie showing under paragraph 4(a)(ii) has been made. See, e.g., Document Technologies, Inc. supra; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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 has been commonly known by the domain name, even if it 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 Respondent disclaims any commercial use or preparation to make a commercial use of the disputed domain name, and has made no claim of being commonly known by the domain name. The Respondent purports to have registered the disputed domain name for use with a fan based website about the founders of SE Racing, and claims to have a legitimate interest in the domain name on this basis. The Panel disagrees. The Respondent’s website as it appeared prior to the Complainant’s cease and desist letter contained none of the normal indicia of a fan site – no independent commentary about the former SE Racing company or original founders, no information about BMX bikes and racing, nor even any of the numerous photos of BMX bikes that the Respondent claims were sent to him by visitors to the website. See Curtis Jackson v. WhoisGuard, WIPO Case No. D2006-0070.
In short, nothing on the Respondent’s website would have indicated to a visitor arriving at “www.seracing.com” that he or she had arrived at a bona fide fan site – notably lacking is even a bare, self-serving claim of being an unofficial fan site. See Tia Carrere v. Steven Baxt, WIPO Case No. D2005-1072. To the contrary, a visitor arriving at the “www.seracing.com” website and seeing the Complainant’s SE RACING mark and logo prominently displayed thereon (when it so appeared) likely would believe he or she was visiting the Complainant’s website. A claim that something is a “fan site” does not automatically turn it into one. See Curtis Jackson v. WhoisGuard, supra. The fact that the website at the disputed domain name now appears to be in use as a discussion forum does not of itself create rights or legitimate interests for this Respondent; whether or not Respondent is a genuine fan, such use only after a cease and desist letter may be pretextual.
In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. 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 a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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;
(ii) circumstances indicating that the respondent 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;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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 respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In this instance, the Response itself dispels any doubt that the Respondent, a self-proclaimed fan of BMX racing for more than twenty-five years, was aware that SE RACING was a trademark when he registered the disputed domain name. The Respondent knew that the original founders of SE Racing had used the SE RACING mark and name, and he was aware that the Complainant had obtained rights in the SE RACING mark and name when it acquired the business of SE Racing in 2002. Were this not the case, there would have been no occasion for the Respondent to claim that the Complainant had abandoned the mark.
The Panel finds from the circumstances of this case that the Respondent intentionally appropriated the SE RACING mark as his domain name, which he then used to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. The Respondent has not established rights to or legitimate interests in the disputed domain name, and as prior panels have observed, when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. The Respondent’s claim of reverse domain name hijacking suggests that his motivation for registering the disputed domain name may have been to prevent the Complainant from benefiting from the goodwill in the SE RACING mark, even thought the Complainant, having lawfully acquired the mark, has every right to do so.7
In view of the foregoing, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking
For the reasons indicated above, the Panel finds the Respondent’s claim of reverse domain name hijacking to be without merit.
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 <seracing.com> be transferred to the Complainant.
William R. Towns
Dated: February 1, 2008
1 In the WHOIS database maintained by the domain name registrar eNom, on October 29, 2007, Acme Internet Group is listed as the former registrant of the disputed domain name.
2 As of November 7, 2008, eNom’s WHOIS database reflected that WhoisGuard is the registrant of the disputed domain name. WhoisGuard ostensibly is a privacy protection service. See www.namecheap.com.
3 Scot Breithaupt, widely credited as founding the sport of BMX racing in California in the 1970’s, started the company SE Racing in 1976, and with his partner Mike Devitt began manufacturing and selling BMX bikes (SE is an acronym for Scot Enterprise). Reportedly, Devitt eventually became the sole owner of SE Racing. Records maintained by the USPTO indicate that Devitt was an officer of Cycle Science, Inc., the original registrant and owner of the SE RACING mark subsequently assigned to the Complainant. Devitt submitted a declaration to the USPTO attesting to the use of the mark, the registration for which issued in 1999.
4 Initially the SE RACING mark and logo was displayed without any additional web content. Later iterations of the web page include below the SE RACING mark and logo references to “SE Registry”, “SE Store (offering ‘Genuine NOS SE Products and Reproductions’)”, and “SE Gallery”, none of which were functional links. There were two functional links on the web page: one link to an email addresses that visitors were invited to use to join a mailing list, and a second link to an email address that visitors were invited to use to submit photos and information regarding BMX bikes and accessories.
5 The Response has been submitted by Bryan Sluggo, an individual listed as the registrant contact for Acme Internet Group in eNom’s WHOIS records of October 29, 2007, as shown in Annex 1 to the Complaint. According to the Response, Acme Internet Group consists solely of Mr. Sluggo and is his “hobby”. It is unclear whether the Response is submitted on behalf of both Acme Internet Group and WhoisGuard, but it is apparent from the record that WhoisGuard is a privacy protection service, and the Panel concludes that the beneficial owner of the disputed domain name at all material times has been Bryan Sluggo, using the name Acme Internet Group.
6 The Panel notes WHOIS records submitted by the Complainant indicate that WhoisGuard was listed as the registrant for the disputed domain name in June 2007.
7 As noted above, the Respondent’s reverse domain name hijacking is based on the contention that the Complainant is seeking the disputed domain name in an effort to capitalize on the “original companies [sic] pioneering and goodwill for commercial profit.”