WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autosales Incorporated, dba Summit Racing Equipment v. Eighty Business Names
Case No. D2012-0554
1. The Parties
The Complainant is Autosales Incorporated, dba Summit Racing Equipment of Akron, Ohio, United States, represented by Buckingham, Doolittle & Burroughs, LLP, United States of America.
The Respondent is Eighty Business Names of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <summetracing.com> is registered with Rebel.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 19, 2012, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On March 21, 2012, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 23, 2012. 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 has been active in the field of sales in retail stores and mail order services of high performance racing and after market accessories for land vehicles since 1968. It is the owner of 14 trademark registrations in the United States of America, two in respect of SUMMIT, two for SUMMIT RACING EQUIPMENT, two for SUMMIT RACING, two for SUMMIT PERFORMANCE, one for SUMMIT SPEED CAR, one for SUMMIT RACING EQUIPMENT MOTORSPORTS PARK (all the previous trademarks have the word “summit” written in script form as in a logo) and finally SUMMIT RACING EQUIPMENT CUSTOM STYLE and SUMMITRACING.COM, both without the Summit logo in script, each in association with goods and services in one or more of the international classes 07, 09, 12, 25, 35, 36, 41 and 42 (hereinafter the “SUMMIT Trademarks“ or “SUMMIT RACING Trademarks”). While the date of first use of each trademark and the respective classes of goods and services vary from one registration to another, the initial actual use of the trademark SUMMIT RACING EQUIPMENT is 1968, eleven others are within the period extending through 2002, prior to the registration of the disputed domain name, and the last two were registered in 2006, according to the registrations of each adduced in evidence (Annexes 3 to 16 of the Complaint). The Complainant’s trade name SUMMIT RACING EQUIPMENT was registered in the State of Ohio in the United States showing January 1969 as the date of first use.
The Complainant is also the owner of several registrations for the Trademark SUMMIT in Canada, many countries of Europe, the European Community, New Zealand, South Africa and the Bolivian Republic of Venezuela.
The Complainant is the registered owner of the domain name <summitracing.com> and its activities and products are advertised on its website at the address corresponding to its domain name.
The disputed domain name was registered on August 6, 2004 and is presently set to expire on August 6, 2012.
Although there is evidence of the Respondent’s website and a website hyperlinked to the former at the address of the disputed domain name, on March 15, 2012, the Panel has verified that there is no website that can be observed or visited at the address of the disputed domain name, namely <summetracing.com>.
5. Parties’ Contentions
The Complainant contends that it has significant trademark rights in its various SUMMIT and SUMMIT RACING Trademarks, some of which have been used by the Complainant since 1968 and that the disputed domain name is phonetically and confusingly similar to the Complainant’s SUMMIT RACING Trademarks.
The Complainant, relying on earlier UDRP decisions, further contends that the change of the letter “i” to the letter “e” to create the disputed domain name does not diminish or take away the confusing similarity which has been held in the said UDRP decisions. See Hewlett-Packard Company v. John Zuccarini, NAF Claim No. 94454; State Farm Mutual Automobile Insurance Company v. Try Harder & Company, NAF Claim No. 94730; Compaq Information Technologies Group. L.P. v. Seocho, NAF Claim No. 103879; Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; and Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.
According to the Complainant’s own verifications, it did not find any evidence which may show that the Respondent is commonly known by the disputed domain name.
The Complainant represents that the Respondent is attempting to capitalize on the goodwill that the Complainant has built in its SUMMIT RACING Trademarks in the field of automobile racing parts, there being, according to the Complainant, no reason why the Respondent would use the same name and domain name as that of the Complainant except for the minor change of the letter “i” to “e” and that this does not amount to a fair use of a domain name as held by the panels in earlier UDRP decisions. See Broadcom Corporation v. Intellifone Corporation, NAF Claim No. 96356 and Encyclopaedia Britannica, Inc. v. Zuccarini and the Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
The Complainant claims that one may see evidence of bad faith when the disputed domain name involves such a minor degree of variation from the SUMMIT RACING Trademarks of the Complainant and that such minor variation suggests that the disputed domain name was registered, primarily for the purpose of disrupting the Complainant’s business. According to the Complainant, when an Internet visitor attempts to reach the website at the address corresponding to the disputed domain name, the Internet visitor is redirected to the website at “www.eesonlinetest.com” on which said visitor will see a race car on a race track before opening a pop-up window claiming that the visitor won a price. The Complainant relies on the UDRP decision in Sony Kabushiki Kaisha (also trading as Sony Cooperation) v. Inja, Kil, WIPO Case No. D2000-1409) wherein it was stated that “it is inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant.”
According to the Complainant, further evidence of bad faith resides in the Respondent being engaged in the well known practice of “typo-squatting” by which Internet visitors are diverted when they may misspell the Complainant’s SÙMMIT RACING Trademarks or its domain name and thereby sent to a website engaged in the solicitation of goods for the Respondent’s commercial gain, which typo-squatting activity has been recognized by other panels in UDRP proceedings as use in bad faith of a domain name pursuant to the Policy. See Hewlett-Packard Co. v. John Zucarrini, supra; Bama Rags, Inc. v. John Zucarrini/ Cupcake International, NAF Claim No. 94380; Dow Jones & Company and Dow Jones L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. The Respondent was served with the Complaint
Considering that the Respondent has not filed any response, on the one hand, and that the DHL courier service used by the Center was not able to deliver the paper copy of the Complaint to the address disclosed by the Registrar of the disputed domain name and corresponding to the one found by the Center in its WhoIs search, the Panel verified the various email activities of the Center in respect of serving the Complaint on the Respondent and notes that, on March 23, 2012, the Complaint appears to have been successfully forwarded and received at the email address of the Respondent disclosed by the Registrar and located by the Center, on the other hand.
While there was a report from Mail Delivery Subsystem that delivery by email was complete, the reception was not confirmed or notified by several recipients including the Respondent. The Panel finds that the Center used all reasonable means available to notify the Complaint and has successfully discharged its notification obligations pursuant to paragraphs 2(a) and 4(a) of the Rules.
B. Identical or Confusingly Similar
The evidence supplied by the Complainant is elaborate and well documented in establishing that the SUMMIT and SUMMIT RACING Trademarks have been used, starting at different dates since at least 1968, by the Complainant and that subsequently, a group of 14 different trademarks, all incorporating the term “summit” and eight incorporating the term “summit racing” have been used and registered by the Complainant prior to the registration of the disputed domain name in 2004. The Panel therefore finds that the Complainant has rights in the trademarks SUMMIT, SUMMIT RACING and the other SUMMIT Trademarks identified herein, which constitute the family of SUMMIT Trademarks owned by the Complainant.
As represented by the Complainant, it is well established in earlier UDRP decisions and the Panel finds that the simple change of one letter “i” to “e” in registering the disputed domain name does not, in any way, diminish the confusing similarity between the SUMMIT RACING Trademarks and the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the SUMMIT and SUMMIT RACING Trademarks of the Complainant.
The Panel finds that the first criterion under paragraph 4(a) of the Policy has been met.
C. Rights or Legitimate Interests
Pursuant to some searches, the Complainant has not found any evidence which indicates that the Respondent is commonly known by the disputed domain name and this comes as no surprise as the Panel notes the Respondent’s business name is “Eighty Business Names” and that there also aapears to be no evidence that the Respondent has used or owns any trademarks or other rights incorporating the terms “summet”, “summit” or “summit racing” which it would have owned prior to 2004 when the disputed domain name was registered. This constitutes prima facie evidence of absence of rights or legitimate interests by the Respondent which shifts upon the Respondent the burden of providing evidence that it has rights and legitimate interests in the disputed domain name. The Respondent did not file a reply to the Complaint.
The Panel finds that the Respondent has not rebutted the prima facie evidence established by the Complainant and that the Respondent does not have rights or legitimate interests in the disputed domain name.
The second criterion under paragraph 4(a) of the Policy has been met.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 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 your website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
The Panel is familiar with and accepts the view in earlier UDRP decisions cited by the Complainant, finding that a simple minor change of one letter in a well known and long established trademark is inappropriate but rather evidence of bad faith by the respondent. Had the Respondent searched the national trademark register of major English language countries, in particular that of the United States of America, it would have definitely located the several SUMMIT RACING Trademarks registered and owned by the Complainant. In the present circumstances, in particular bearing in mind the business name of the Respondent, “Eighty Business Names”, in this Panel’s appreciation this may be an illustration of willful blindness on the part of the Respondent, most likely familiar with the SUMMIT RACING Trademarks upon registering the disputed domain name. In this Panel’s view, such registration was done presumably with the knowledge of the SUMMIT RACING Trademarks of the Complainant in an attempt, as represented by the Complainant, to capitalize on the goodwill and reputation of the Complainant associated with the SUMMIT RACING Trademarks in the field of automobile racing parts.
This presumed awareness of the existence of the SUMMIT RACING Trademarks of the Complainant by the Respondent is, in this Panel’s view, confirmed by the following observations that the Complainant has located in using the disputed domain name to visit the website of the Respondent. The Complainant, as other Internet visitors would have noted in making a similar attempt, was redirected to another website at the address “www.eesonlinetest.com” where a page pertaining to cars and car races appears with a message sign “Congratulations! You are today’s Ohio winner”, Ohio being the state in the USA where the Complainant is located. The “award date” on said illustration is March 15, 2012, four days prior to the filing of the Complaint (this illustration is incorporated in the body of the Complaint). This page shows cars and a car race track, not motorcycles, bicycles, boats or otherwise. The Panel does not see how this specific car message on that website associated with that of the Respondent could be there without prior knowledge of the Complainant, its Trademarks and line of activities related to car racing.
The Panel finds that the disputed domain name was registered in bad faith.
The Complainant has showed that Internet visitors either attempting to reach the website of the Complainant but who have made a mistake in substituting the letter “e” for the letter “i” or attempting to reach the website corresponding to the disputed domain name, said visitors were redirected to another website related to race cars and race tracks and the possibility of winning a price. The Panel has attempted to visit the website at the address of the disputed domain name and the other website to which Internet visitors were redirected according to the evidence of the Complainant, but without success. The Panel supposes the website has probably been closed or modified pursuant to the service of the Complaint.
The Panel still considers that at some point, at least as recently as March 2012, the Respondent was creating, on its website, a false impression of association with the Complainant as it has been stated by the panel in the following decision, which this Panel adopts, that “it is inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant.” (See Sony Kabushiki Kaisha v. Inja (also trading as Sony Cooperation), Kil, WIPO Case No. D2000-1409). In the alternative, when one considers that it may no longer be possible to reach a website at the address of the disputed domain name, as the Panel observed, this may cause serious damage to the reputation of the Complainant when this happens to an Internet visitor upon trying to reach the website of the Complainant and who makes a spelling mistake.
The Panel finds that the disputed domain name was registered and is being used in bad faith.
The third criterion under paragraph 4(a) of the Policy has been met.
The Panel concludes that:
(a) the disputed domain name <summetracing.com> is confusingly similar to the Complainant’s SUMMIT RACING Trademarks; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name <summetracing.com>; and
(c) the disputed domain name <summetracing.com> has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <summetracing.com> be transferred to the Complainant.
J. Nelson Landry
Dated: May 4, 2012