WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association for Stock Car Auto Racing, Inc. v. Don Deaube , R & D Enterprises
Case No. D2002-0847
1. The Parties
The Complainant is National Association for Stock Car Auto Racing, Inc., of Daytona Beach, Florida, United States of America, represented by Enns & Archer LLP of United States of America.
The Respondent is Don Deaube, R & D Enterprises, of California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thenascarstore.com> (the "Domain Name") is registered with InnerWise, Inc., d/b/a ItsYourDomain.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2002. On September 11, 2002, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the Domain Name. On September 12, 2002, InnerWise, Inc. d/b/a ItsYourDomain.com 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 September 13, 2002. In accordance with the Rules, Paragraph 5(a), the due date for Response was October 3, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 7, 2002.
The Center appointed David Maher as the sole panelist in this matter on October 18, 2002. 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
Paragraph 14(b) of the Rules provides:
"If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
Pursuant to the provisions of Paragraph 14(b), the Panel accepts Complainantís characterization of the factual background contained in the Complaint, namely:
Complainant is the worldís premier regulating, governing and sanctioning body for stock car automobile racing. Complainant has used its NASCAR mark in connection with stock car racing since at least 1948. Each year, it sanctions over 2,200 races in 12 divisions on 125 tracks in 39 states across the United States. Complainant has a world-wide audience for radio and television coverage of its racing events, and the events are the number one spectator sport in the United States. Complainantís racing events have been broadcast internationally on television and radio for many years. Complainantís racing events have received and continue to receive extensive international, national and local media coverage in thousands of newspapers and through other media outlets.
Complainant operates its web site at <nascar.com>. This domain name was registered on December 28, 1995. The web site at that address was launched on December 7, 1999. The site features information about racing and merchandise bearing the NASCAR mark. The section of the <nascar.com> web site from which consumers may buy NASCAR merchandise is called the "STORE." At the <nascar.com> store, consumers may purchase branded apparel, such as t-shirts, hats and jackets, as well as items such as cups, belts, toy cars and many others. The <nascar.com> web site receives approximately 3.5 million page views per day, which includes an average of 320,000 unique users daily. In July 2002, the site received more than 120 million page views. During the month of February 2001, the site had 4.1 million unique users, making it the second most visited sports web site. In addition, racing events are broadcast via the web site, where they can be viewed worldwide.
Complainant has established a family of NASCAR trademarks and service marks used in connection with a wide range of goods and services. They include, inter alia, NASCAR; NASCAR INTERNATIONAL; NASCAR Ė EVERYTHING ELSE IS JUST A GAME; NASCAR WINTER HEAT; NASCAR LIVE; NASCAR TODAY; NASCAR CAFÉ; NASCAR COUNTRY; NASCAR GARAGE; NASCAR REVOLUTION; NASCAR ROCKS AMERICA and INSIDE NASCAR. (Complaint, Annex C)
The NASCAR marks are registered in the United States Patent and Trademark Office in connection with diverse goods and services in addition to its primary race sanctioning services, including an internet web site, magazine and newspaper publications, television shows, radio shows, automotive products, clothing, bottled water, key chains, restaurant services, posters, prints, coasters, flags, magnets, license plates, calendars, clocks, mugs, pre-paid phone cards, tote bags, sports bottles, toys, games, computer software games, sunglasses, watches, wallets, linen, towels, dart boards, screen savers and trading cards.
Complainant licenses use of its marks to more than two hundred different licensees, many of whom have exclusive licenses with Complainant for certain categories of goods and services. Over the past several years, sales of Complainantís licensed products have ranged from $80 million in 1990 to $1.34 billion in 2001.
Complainant first became aware of Respondentís <thenascarstore.com> web site in June 2002. The WHOIS data for this domain name indicates that Respondent registered the Domain Name on December 8, 2001. (Complaint, Annex A)
Respondentís web site offers to sell "officially licensed NASCAR jackets & apparel," as well as "officially licensed" merchandise related to various NASCAR drivers. Respondentís web site appears to focus on selling hats, jackets and t-shirts. At the top of the home page, Respondent has placed a disclaimer that states "NASCAR is a registered trademark of the National Association for Stock Car Auto Racing, Inc. TheNascarStore is NOT in any way affiliated with nor endorsed by NASCAR. Visit the Official Site of NASCAR." Each page of the web site contains a link to the official <nascar.com> web site that uses the distinctive NASCAR & Design trademark. (Complaint, Annex E)
Complainant sent a cease and desist letter dated August 21, 2002, to the owner listed in the WHOIS information for the Domain Name. (Complaint, Annex F) On August 29, 2002, Complainant received a response (Complaint, Annex G) in which Respondent indicated no willingness to transfer the Domain Name or otherwise cease its use of the NASCAR mark.
5. Partiesí Contentions
Complainant contends the Domain Name is confusingly similar to Complainantís mark because the domain name <thenascarstore.com> incorporates Complainantís NASCAR mark in full, adding only the article "the" and the generic or descriptive term "store."
Complainant cites United States trademark law for the proposition that likelihood of confusion is not avoided by the addition of a generic or descriptive term to a trademark, especially when the particular generic or descriptive term bears a close relationship to the goods and services offered in connection with the trademark. Complainantís NASCAR mark is registered for numerous clothing items and related goods, which are sold, among other locations, from the NASCAR web site <nascar.com>. Complainant contends that the phrase "the NASCAR store" in the Domain Name creates the impression that Respondentís web site is the one and only official store for NASCAR merchandise, and that the addition of "the" and "store" to Complainantís famous NASCAR mark does not remove the likelihood of confusion, but rather increases it, misleading consumers into believing that Respondent is an authorized licensee of Complainant, or that Complainant has otherwise sponsored or is affiliated with Respondent.
Complainant further contends that Respondent has no rights or legitimate interests with respect to the Domain Name. Complainant contends that Respondent has no rights of its own in the mark NASCAR, and that Complainant never authorized Respondent to use the mark in the Domain Name.
Complainant also contends that Respondent is not making legitimate non-commercial or fair use of Complainantís NASCAR mark, because Respondentís use of the Domain Name is clearly commercial, and does not meet accepted standards of fair use.
Finally, Complainant contends that the Domain Name was registered and is being used in bad faith because (a) there is no reasonable basis for Respondent to assert that it was not aware that Complainant was the owner of the NASCAR mark prior to Respondentís registration and use of the Domain Name, and (b) Respondent has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in NASCAR and in a family of trademarks including the name NASCAR based on its use of the name and its trademark registrations. The Panel finds that the Domain Name "is identical or confusingly similar to" NASCAR. The Panel does not believe that the addition of "the" and "store" to NASCAR in the Domain Name has any bearing on the issue of confusion.
B. Rights or Legitimate Interests
There is nothing in the record in this case to show that Respondent has rights or legitimate interests in the Domain Name. None of the circumstances enumerated in Paragraph 4(c) of the Policy apply to Respondent. Respondent may be making a bona fide offering of goods or services. However, the use of the Domain Name, confusingly similar to Complainantís trademarks, is evidence of an intent by Respondent to mislead customers into a belief that Respondent is affiliated with Complainant or authorized by Complainant to use its marks and thereby to divert customers from Complainantís web site. The disclaimer contained in Respondentís web site is not adequate to dispel this confusion, since the damage is done when a viewer is attracted to Respondentís web site. There is no evidence that Respondent has been commonly known by the Domain Name, nor is there evidence that Respondent been making a legitimate noncommercial or fair use of the Domain Name.The Panel finds that Respondent does not have rights or legitimate interests in respect of the Domain Name within the meaning of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Further, the Panel finds that Respondentís registration and use of the Domain Name is in bad faith within the meaning of Paragraph 4(a) of the Policy. It is clear from the record that Respondent is using the Domain Name for a web site. With respect to the circumstances listed in Paragraph 4(b) of the Policy as evidence of registration and use in bad faith, Respondentís behavior falls within the purview of Paragraph 4(b)(iv), in that Respondent, by using the domain name, has "Öintentionally attempted to attract, for commercial gain, Internet users to [Respondentís] web site Öby creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondentís] web siteÖ" The Panel finds that, on this record and in the absence of any showing of rights or legitimate interest by Respondent, Respondentís registration and use of the Domain Name is in bad faith.
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, <thenascarstore.com> be transferred to the Complainant.
Date: October 22, 2002