WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autosales, Incorporated dba Summit Racing Equipment v. T. Hogervorst, Japan Carparts V.O.F

Case No. DEU2019-0006

1. The Parties

The Complainant is Autosales, Incorporated dba Summit Racing Equipment, United States of America (“United States”), represented by Buckingham, Doolittle & Burroughs, LLC, United States.

The Respondent is T. Hogervorst, Japan Carparts V.O.F, the Netherlands, represented by ICTRecht Noord-Nederland B.V., the Netherlands.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <summit-racing.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is AXC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 13, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 16, 2019, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 21, 2019. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was July 4, 2019. The Response was filed with the Center on July 3, 2019.

The Center verified that the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.

The Center appointed Jane Seager as the sole panelist in this matter on July 12, 2019. 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant is a United States corporation engaged in the business of aftermarket automotive parts. The Complainant has made use of the name “Summit Racing Equipment” since January 1969.

For use in connection with its aftermarket automotive parts business, the Complainant has registered, inter alia, the following trademarks:

- United Kingdom Trademark Registration No. 1524509, SUMMIT, registered on October 7, 1994;

- United States Trademark Registration No. 1979695, SUMMIT RACING EQUIPMENT (stylized), registered on June 11, 1996;

- European Union Trade Mark (“EUTM”) Registration No. 000297754, SUMMIT, registered on December 15, 1998;

- German Trademark Registration No. 39706924, SUMMIT RACING EQUIPMENT (stylized), registered on May 3, 1999;

- United States Trademark Registration No. 2547445, SUMMITRACING.COM, registered on March 12, 2002; and

- EUTM Registration No. 016157901, SUMMIT RACING EQUIPMENT, registered on April 18, 2017.

The Complainant is also the registrant of the domain name <summitracing.com>, which it uses for its official website and online store at “www.sumitracing.com”. The domain name <summitracing.com> was registered on December 27, 1995, and appears to have been used by the Complainant since at least 2001.

The Respondent is a Dutch company that operates a business of selling racing car parts, which are sourced from a supplier in Taiwan Province of China.

The disputed domain name was registered by the Respondent on July 26, 2011. The disputed domain name resolves to a website that advertises car parts for sale (the “Respondent’s website”).

Prior to filing the Complaint, the Respondent received a letter from the Complainant asserting that the disputed domain name infringed the Complainant’s trademark. The Respondent replied to the Complainant pointing out that the Respondent’s rights in the disputed domain name pre-dated the EUTM relied on by the Complainant, but nevertheless made some changes to its website in light of the matters raised by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the SUMMIT and SUMMIT RACING EQUIPMENT trademarks, details of which are set out in the factual-background section above. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks SUMMIT and SUMMIT RACING EQUIPMENT, which, in some instances, date back to 1968. The Complainant also asserts that the disputed domain name is confusingly similar to its domain name <summitracing.com>, in which the Respondent has merely inserted a hyphen between the words “summit” and “racing”, and then changed the generic Top-Level Domain (“gTLD”) “.com” to the country code Top-Level Domain (“ccTLD”) “.eu”. The Complainant, citing various cases decided under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), argues that domain names that are common misspellings or near-spelling variants of a trademark are not sufficient to avoid confusing similarity with the concerned mark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it is unaware of any evidence to establish that the Respondent is commonly known by the disputed domain name pursuant to the ADR Rules. Rather, asserts the Complainant, the Respondent is attempting to take advantage of the goodwill that the Complainant has built in the name “Summit Racing” in the field of aftermarket auto parts.

The Complainant further asserts that the Respondent’s registration and use of the disputed domain name is primarily for the purpose of disrupting the Complainant’s business and to take advantage of the goodwill that the Complainant has established in the SUMMIT RACING mark. The Complainant states that the disputed domain name consists of a minor spelling variation of the Complainant’s domain name <summitracing.com> and its various registered trademarks, therefore when Internet users misspell the Complainant’s domain name, they will be redirected to the Respondent’s website where the Respondent is selling the exact same products as the Complainant. The Complainant submits that the Respondent’s deliberate attempts to generate confusion disrupts the Complainant’s business and constitutes bad faith. More specifically, the Complainant asserts that the Respondent is engaged in typosquatting by diverting Internet users who misspell the Complainant’s domain name to the Respondent’s website for the Respondent’s commercial gain.

The Complainant requests transfer of the disputed domain name to its “registered agent in Sweden […] a natural person resident within the European Community […].” In the alternative the Complainant requests that the disputed domain name be revoked.

B. Respondent

The Respondent submits that the Complainant’s German, United Kingdom and United States trademarks only afford territorial protection, and that only the Complainant’s EUTM registrations are relevant. The Respondent asserts that of the Complainant’s EUTMs, neither SUMMIT nor SUMMIT RACING EQUIPMENT offers the Complainant any protection against use of the disputed domain name. The Respondent submits that the disputed domain name and the Complainant’s EUTMs are not identical and that there is no likelihood of confusion for the public. The Respondent further submits that the disputed domain name is not confusingly similar to the Complainant’s trademark SUMMIT RACING EQUIPMENT in that the word “equipment” in the Complainant’s trademark differentiates the disputed domain name phonetically, aurally, and conceptually so that confusion is unlikely. The Respondent argues that the likelihood that Internet users searching for the Complainant will end up on the Respondent’s website is negligible, as to do so, Internet users would need to add a hyphen and the ccTLD “.eu” to end up at the Respondent’s website. The Respondent asserts that the disputed domain name does not consist of any misspelling of the Complainant’s trademark, contrary to what is claimed by the Complainant.

The Respondent states that in 1996, it entered into a commercial relationship with a Taiwanese supplier of automotive parts, and that the disputed domain name reflects the name of its supplier. The Respondent asserts that the disputed domain name was registered in 2011, pursuant to consultations with its Taiwanese supplier, with a view to selling specific automotive racing parts via a website at the disputed domain name.

The Respondent submits that it has, since 2011, carried on a bona fide business using the disputed domain name, and that it was not until 2017 that the Respondent was notified of any alleged intellectual-property infringements by the Complainant. Moreover, the Respondent claims to be widely known in Europe under the name “Summit Racing” as well as under the disputed domain name itself, whereas the Complainant has failed to establish in evidence that it is internationally known as “Summit Racing”.

The Respondent asserts that it is making fair use of the disputed domain name to offer specialized products, i.e., reinforcement brackets for racing cars, which originate from the Respondent’s Taiwanese supplier. The Respondent states that it has no intention to mislead consumers or to benefit commercially from or damage the Complainant’s brand. The Respondent submits that the Complainant has no legitimate interest in the acquisition of the disputed domain name, and that the Complainant’s real reason for bringing the present proceeding lies in the fact that the Respondent has developed a large customer base, and accordingly the disputed domain name is very valuable. In this regard, the Respondent notes that other domain names including the “summitracing” string are available for registration.

Further to the above, the Respondent denies having ever acted in bad faith. The Respondent claims that for Internet users searching for specific parts offered by the Respondent, it is clear that those products offered on the Respondent’s website originate from the Respondent’s Taiwanese supplier and not from the Complainant. The Respondent further submits that it is clear from the content of the Respondent’s website that it is not operated by the Complainant. The Respondent notes that the logos displayed on the Complainant and the Respondent’s websites are different, and that there is text in the footer of the Respondent’s website indicating that it is not the Complainant’s United States website. The Respondent reiterates that it has not engaged in typosquatting, as there is no question of misspelling in respect of the disputed domain name and the name of the Respondent.

6. Discussion and Findings

Under Paragraph B(11)(d)(1) of the ADR Rules, the Complainant must establish:

(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either

(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or

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

Noting the substantive similarities between the ADR Rules and the UDRP, and in light of the fact that both Parties have made reference to prior UDRP decisions in their submissions, the Panel will refer to UDRP jurisprudence as expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law

As a preliminary matter, the Panel notes the Respondent’s assertion “[…] the various trademark registrations in Germany, Great Britain, and the USA offer only territorial protection. Therefore these cannot be invoked in other territories. In other words, the trademark registrations invoked are not relevant in the present case. Only the European trademark registrations are relevant in this context.” Such an interpretation of the ADR Rules is misguided. According to Article 21(1) of Regulation (EC) No. 874/2004, “[a] registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and/or Community law, such as the rights mentioned in Article 10(1).” Article 10(1) of the aforementioned regulation includes “registered national and community trademarks”. While the Complainant’s United States trademarks fall outside of the territorial scope of the ADR Rules, those trademarks registered in Germany and the United Kingdom do not, and are therefore recognizable for the purposes of assessment under the first element of the ADR Rules.

The Complainant has established rights in the trademarks SUMMIT and SUMMIT RACING EQUIPMENT for the purposes of Paragraph B(11)(d)(1)(i) of the ADR Rules by virtue of their registration as national trademarks in Germany and the United Kingdom, and as EUTMs.

The disputed domain name incorporates the Complainant’s SUMMIT trademark in its entirety, together with the term “racing” separated from the Complainant’s trademark with a hyphen. The addition of the term “racing” does not prevent a finding of confusing similarity with the Complainant’s trademark; see Andrey Ternovskiy dba Chatroulette v. Maria Di Blasi, WIPO Case No. DEU2019-0031. Moreover, the disputed domain name comprises the first two words of the Complainant’s SUMMIT RACING EQUIPMENT trademark. In the Panel’s view, the dominant element of the Complainant’s mark, i.e., the words “summit racing” are clearly recognizable in the disputed domain name. The disputed domain name is clearly evocative of the Complainant’s trademark. As such, the Panel also considers the disputed domain name to be confusingly similar to the Complainant’s SUMMIT RACING EQUIPMENT trademark. See WIPO Overview 3.0, section 1.7. The ccTLD “.eu” may be disregarded for the purposes of assessment under the first element.

For the foregoing reasons, the Panel finds that the Complainant has satisfied the requirements of Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

Paragraph B(11)(e) of the ADR Rules provides that the following circumstances, without limitation, demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B11(d)(1)(ii):

(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;

(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;

(3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.

In essence, the Complainant asserts that the Respondent’s use of the disputed domain name does not amount to a legitimate offering of goods or services within the meaning of the ADR Rules as the Respondent is attempting to take unfair advantage of the goodwill associated with the Complainant’s trademark. The Respondent, on the other hand, claims that it is operating a bona fide business via the disputed domain name, and that as a result of its business operations it has become commonly known by the disputed domain name amongst the relevant public.

The Panel, having carefully considered the contentions and supporting evidence from both sides, as well as having visited both the Complainant’s and the Respondent’s websites, takes the view that the Respondent’s use of the disputed domain name does not support a claim of rights or legitimate interests. The Respondent relies on its relationship with a Taiwanese supplier as providing a basis for the Respondent to have registered and used the disputed domain name, citing invoices for goods ordered from a Taiwanese entity. The Respondent asserts that its relationship with the Taiwanese entity and the origin of the goods offered on its website are clear as indicated on its website. In fact, the Respondent’s website states:

“Welcome to the world of Summit Racing Equipments, home of the premier suspension tuning specialists.

Summit Racing was founded in 1998 by former GP/GT driver mr. T. Hsieh, developing mainly racing parts for local racers and high-end tuners and performance specialists. Rapidly becoming a force into suspension technology in Asian/Eurasian territory, being used in many serious performance cars as well as race GT saloons. The Summit brand quickly gained recognition and awareness throughout the rest of the world at tuners and racers, being a manufacturer and having their own R&D center means that parts developed and thoroughly tested in house. Summit is making use of the highest grade materials only, welded and constructed by cutting edge automated machinery you can rest assured that you get the best there is to offer in suspension technology.”

Contrary to the Respondent’s claims, there is nothing in the above that indicates that the goods offered on the Respondent’s website are supplied from a Taiwanese entity. Furthermore, the Respondent asserts that Internet users arriving at the Respondent’s website will immediately realize that they have arrived at the wrong page, due in part to the footer of the Respondent’s website, “indicating that it is a company based in the Netherlands rather than in the USA and the text on the Respondent’s website that clearly states that this is not the Complainant’s website from the USA.” In fact, the Respondent’s website simply lists the Respondent’s company name and address in the Netherlands. There is nothing on the website in the form of a disclaimer to clearly indicate that the Respondent is not affiliated with the Complainant. The Panel further notes that the source code for the Respondent’s website includes the metatag “summit usa”, which is indicative of an intent on the part of the Respondent to capture Internet traffic from the United States.

Critically, many of the Respondent’s submissions under the first element rely on the absence of the word “equipment” in the disputed domain name itself as removing any likelihood of confusion between the disputed domain name and the Complainant’s trademark; however, goods advertised on the Respondent’s website and the invoices provided by the Respondent are branded with “Summit Racing Equipments”, which differs from the Complainant’s SUMMIT RACING EQUIPMENT trademark in terms of addition of the letter “s” at the end of the word “equipment”.

In light of the above, and noting that both Parties operate in a highly specialized market, i.e., the sale of aftermarket automotive parts, the Panel considers it more likely than not that the Respondent had the Complainant’s trademarks in mind at the time of registering the disputed domain name, and did so with a view to take unfair advantage of the goodwill associated with the Complainant’s mark. While there are differences in the look and feel of the Complainant and the Respondent’s websites, the Panel considers that the Complainant’s trademark has achieved a degree of distinctiveness in relation to the goods and services for which it is used that Internet users finding themselves at the Respondent’s website would likely be confused as to the source of the goods offered therein. In addition, the Respondent’s removal of its “Summit Racing Equipments” brand from the header of its website after being contacted by the Complainant tends to support the inference that the Respondent was aware that it was not acting legitimately in using a name that closely resembled the Complainant’s trademark.

In the Panel’s view, the fact that the Respondent’s Taiwanese affiliate may have established a business of supplying car parts making use of the “Summit Racing Equipments” brand, legitimately or not, does not have the effect of conferring rights on the Respondent as being commonly known by the disputed domain name. Rather, it is made clear on the Respondent’s website that the owner of the disputed domain name is “Japan Carparts” of the Netherlands. The Respondent has not produced any evidence of its reputation under the name “Summit Racing”. Furthermore, the Respondent has not obtained any registered trademarks for “Summit Racing” or “Summit Racing Equipments”. In the circumstances, the Panel does not find that the Respondent has become commonly known by the disputed domain name within the meaning of Paragraph B(11)(e)(2) of the ADR Rules.

The Respondent’s website clearly being commercial in nature, it is clear that Paragraph B(11)(e)(3) of the ADR Rules is not applicable.

For the foregoing reasons, the Panel finds on balance that the Complainant has satisfied the requirements of Paragraph B(11)(d)(1)(ii) of the ADR Rules.

C. Registered or Used in Bad Faith

While the grounds of Paragraph B(11)(d)(1) of the ADR Rules are alternative requirements, for completeness, the Panel has also considered the bad faith element.

It follows from the findings as set out above under Paragraph B(11)(d)(1)(ii) of the ADR Rules that the Respondent has used the disputed domain name in order to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks, which are recognized by national and Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products offered for sale therein, within the meaning of Paragraph B(11)(f)(4) of the ADR Rules.

The Panel finds that the Complainant has also satisfied the requirements of Paragraph B(11)(d)(1)(iii) of the ADR Rules.

7. Decision

To be granted the remedy of transfer in accordance with Paragraph 11(b) of the ADR Rules, a complainant must provide evidence that it satisfies the eligibility criteria for registration set out in Paragraph 4(2)(b) of Regulation (EC) No. 733/2002. The Complainant has provided the contact details of a natural person who appears to be a resident of Sweden as its “registered agent”. In view of the fact that the Complainant has relied on its duly-registered trademarks registered with the European Union Intellectual Property Office, and also noting that the Complainant has spent considerable time and resources in preparing and filing the present Complaint, the Panel is of the view that an order for transfer of the Domain Name to the Complainant’s registered agent would be most appropriate. However, Section 5 of EURid’s Domain Name Registration Policy states:

“The [WhoIs contact] information must be that of the Registrant and must not be that of the Registrar, proxy or representative of a person or entity that does not meet the General Eligibility Criteria.”

The Complainant, being a United States corporation, does not satisfy the General Eligibility Criteria, and, in the absence of any evidence to the contrary, the Panel is of the view that the Complainant’s “registered agent” would, fall into the category of “representative” for the purposes of EURid’s Domain Name Registration Policy. For the above reasons, the Panel has ordered the revocation of the disputed domain name.

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <summit-racing.eu> be revoked.

Jane Seager
Sole Panelist
Date: August 2, 2019