WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autosales Incorporated, d/b/a Summit Racing Equipment v. VHR Motorsports Parts & Accessories (a/k/a VHR Motorsports Parts Accessories)

Case No. D2011-0801

1. The Parties

Complainant is Autosales Incorporated, d/b/a Summit Racing Equipment of Akron, Ohio, United States of America, represented by Buckingham, Doolittle & Burroughs, LLP, United States of America.

Respondent is VHR Motorsports Parts & Accessories of Etna, Ohio, United States of America (a/k/a VHR Motorsports Parts Accessories of Pataskala, Ohio, United States of America).

2. The Domain Names and Registrar

The Disputed Domain Names <summitracing.biz> and <summitracing.mobi> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2011, naming as Respondent DomainsByProxy, Inc. On May 9, 2011, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar”) a request for registrar verification in connection with the Disputed Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 16, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 16, 2011, naming as Respondent VHR Motorsports Parts & Accessories.¹

The Center verified that the Complaint and amended 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 Respondent of the Complaint, and the proceedings commenced on May 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 10, 2011.

On June 11, 2011, the Center received an email from Respondent, stating, in its entirety: “WHAT THE HECK IS THIS ALL ABOUT? These DOMIAN NAMES ARE OWNED BY US AND IF THEY WANT THEM THEN THEY NEED TO BUY THEM? This is a FREE COUNTRY AND WE CAN BUY ANY DOMAIN NAME THAT IS UNOWNED”.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 21, 2011. 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

Complainant states that it is the owner of various trademark registrations that include the word “Summit,” including the following federal registrations in the United States of America (which are supported in annexes with appropriate documentation):

These marks are referred to hereafter as the “Summit Trademarks.”

The Panel notes that Complainant also stated that it is the registrant of U.S. Reg. Nos. 2,618,328 and 2,713,558 for the mark SUMMIT RACING – but the Panel has observed that these registrations have been identified as cancelled on the website of the U.S. Patent and Trademark Office “because registrant did not file an acceptable declaration under Section 8.”

The Disputed Domain Names were registered on February 6, 2010 (<summitracing.mobi>) and February 11, 2007 (<summitracing.biz>).

Complainant states that both of the Disputed Domain Names redirect visitors to a website at “www.vhrpartsandaccessories.com”, which sells products that directly compete with those sold by Complainant.” In support thereof, Complainant included in the body of the Complaint a screenshot that it alleges is from this website, which website includes the headline, “Welcome to Drag Race Car Parts and Accessories”.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- Each of the Disputed Domain Names is identical or confusingly similar to the Summit Trademarks because they “are phonetically and confusingly similar to Complainant’s trademarks and domain name <summitracing.com>. In fact, Respondent has done nothing more than register Complainant’s subdomain name in different domains, namely, .mobi and .biz, to create the domain names <summitracing.mobi> and <summitracing.biz>.”

- Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because, inter alia, “Complainant is unaware of any evidence to establish that Respondent is commonly known by the <summitracing.mobi> or <summitracing.biz> names pursuant to Policy ¶ 4(c)(ii)…. To the contrary… it appears that Respondent is attempting to palm off of the goodwill that Complainant has built in the name ‘Summit Racing’ by copying Complainant’s subdomain, and a number of its federally registered trademarks/service marks and registering the same in different domains and licensing the same to Complainant’s competitors. Why else would Respondent… use the same subdomain name as Complainant in its domain names, and then permit Complainant’s competitors to use said domains to sell competing products…? Moreover, fair use does not apply where the domain names are misspellings or variations of Complainant’s mark.”

- Each of the Disputed Domain Names was registered and is being used in bad faith because “when a user mis-types Complainant’s legitimate domain name (i.e., “www.summitracing.com”), by changing the domain from ‘.com’ to ‘.mobi’ or ‘.biz’, the user is directed to a competitor’s website”; “Respondent is purposefully frustrating internet users from visiting Complainant’s website”; “Complainant’s potential loss of customers due to Internet user impatience, caused by Respondent’s deliberate attempts to generate confusion, disrupts Complainant’s business”; and “the Internet user will likely believe that there is an affiliation between Respondent and Complainant, which there is not.”

B. Respondent

Respondent did not reply to Complainant’s contentions. As stated above, Respondent submitted an e-mail to the Center after the due date for a Response, stating, in its entirety: “WHAT THE HECK IS THIS ALL ABOUT? These DOMIAN NAMES ARE OWNED BY US AND IF THEY WANT THEM THEN THEY NEED TO BUY THEM? This is a FREE COUNTRY AND WE CAN BUY ANY DOMAIN NAME THAT IS UNOWNED”.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it appears that Complainant has trademark rights in the Summit Trademarks, and Respondent does not dispute the validity of these trademarks.

As to whether the Disputed Domain Names are identical or confusingly similar to any of these trademarks, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “summitracing”), as it is well-established that the top-level domain names (i.e., “.biz” and “.mobi”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).

Although the Panel is convinced that the Disputed Domain Names are confusingly similar to many of the Summit Trademarks, the most notable comparison is with U.S. Reg. No. 2,547,445, for the mark SUMMITRACING.COM. Disregarding the top-level domain “.com” in this trademark registration (which is obviously for a domain name), as is commonly done for purposes of the Policy, it becomes obvious that the relevant portion of this trademark registration and the relevant portion of each of the Disputed Domain Names is identical (i.e., “summitracing”). See Expedia, Inc. v. Seocho, WIPO Case No. D2002-0288 (finding the domain name <expecia.com> confusingly similar to trademarks including EXPEDIA.COM); and Amazon.com, Inc. v. Oluseyi Ikhizamah, WIPO Case No. D2002-1168 (finding the domain name <zamazon.com> confusingly similar to the trademark AMAZON.COM).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because, inter alia, “Complainant is unaware of any evidence to establish that Respondent is commonly known by the <summitracing.mobi> or <summitracing.biz> names pursuant to Policy 4(c)(ii)…. To the contrary… it appears that Respondent is attempting to palm off of the goodwill that Complainant has built in the name ‘Summit Racing’ by copying Complainant’s subdomain, and a number of its federally registered trademarks/service marks and registering the same in different domains and licensing the same to Complainant’s competitors. Why else would Respondent… use the same subdomain name as Complainant in its domain names, and then permit Complainant’s competitors to use said domains to sell competing products…? Moreover, fair use does not apply where the domain names are misspellings or variations of Complainant’s mark.”

Under the Policy, “[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant appears to argue that bad faith exists pursuant to, at least, paragraph 4(b)(iv). In particular, by redirecting visitors to a website offering products that Complainant alleges (and Respondent does not dispute) “directly compete with those sold by Complainant,” Respondent clearly has engaged in bad faith. See, e.g., Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith”); MedTel Outcomes, LLC v. IT HealthTrack, Inc., WIPO Case No. D2004-0282 (finding bad faith where “Respondent’s home page… offers competing goods and services”); Telefonaktiebolaget L M Ericsson v. DNS Manager, Cenal.com / Moniker Privacy Services, WIPO Case No. D2011-0369 (finding bad faith where respondent’s website directed visitors to “competing products”); and Air System Components, Inc. v. Cristal Enterprises, WIPO Case No. D2009-0064 (finding bad faith where respondent’s website “offers for sale products that compete with Complainant’s products”).

Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.

7. Decision

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 Names <summitracing.biz> and <summitracing.mobi> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Dated: June 26, 2011

¹ The Registrar identified the registrant of the domain name <summitracing.mobi> as VHR Motorsports Parts & Accessories; and the registrant of the domain name <summitracing.biz> as VHR Motorsports Parts Accessories. Complainant’s Amended Complaint named only VHR Motorsports Parts & Accessories as the Respondent. In an e-mail to the Center dated May 18, 2011, Complainant stated, in relevant part: “we believe it is clear that these entities are one and the same despite the deletion of the ampersand.”