DECISION

 

Ward Burton v. Athlete Direct

Claim Number: FA0110000100652

 

PARTIES

Complainant is Ward Burton (“Complainant”) represented by Gene Bolmarcich, of Caterpillar Inc.  Respondent is Athlete Direct, Santa Monica, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <wardburton.com>, <wardburtondirect.com> and <wardburtonwildlifefoundation.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 17, 2001; the Forum received a hard copy of the Complaint on October 22, 2001.

 

On October 18, 2001 , Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <wardburton.com>, <wardburtondirect.com> and <wardburtonwildlifefoundation.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 12, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wardburton.com, postmaster@wardburtondirect.com and postmaster@wardburtonwildlifefoundation.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On December 3, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <wardburton.com> and <wardburtonwildlifefoundation.com> domain names are identical to Complainant’s marks, and the  <wardburtondirect.com> domain name is confusingly similar to Complainant’s mark.

 

Respondent has no rights or legitiamte interests in respect to the disputed domain names.

 

Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

Complainant has gained extensive renown and fame for his achievements in the arena of stock car racing in the United States.  Complainant has exclusively licensed the use of his name to Caterpillar Inc. for Ward Burton branded racing related merchandise.

 

Pursuant to an agreement between Complainant and Respondent, Respondent was to perform certain marketing services for Complainant, including the development of a website for the promotion of Complainant’s NASCAR related activities and the sale of merchandise bearing the name of Complainant. 

 

Respondent registered the <wardburton.com> domain name on July 10, 2000, the <wardburtondirect.com> domain name on February 29, 2000, and the <wardburtonwildlifefoundation.com> domain name on March 6, 2000.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

Complainant’s Rights

Complainant has established sufficient secondary meaning associated with the name WARD BURTON to establish common law rights in its name.  See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the Complainant that common law trademark rights exist).

 

Furthermore, Complainant has also established sufficient secondary meaning associated with its WARD BURTON WILDLIFE FOUNDATION mark to establish common law right to the mark as well.  The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy.  McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).

 

Identical and/or Confusingly Similar

The <wardburton.com> and <wardburtonwildlifefoundation.com> domain names are identical to Complainant’s WARD BURTON and WARD BURTON WILDLIFE FOUNDATION marks.  The addition of the generic top-level domain (“com”) is insignificant for purposes of a determination that a disputed domain name is identical or confusingly similar to a Complainant’s mark.  See Amherst  v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Furthermore, the <wardburtondirect.com> domain name is confusingly similar to the WARD BURTON mark, as it incorporates Complainant’s entire mark combined with a generic word.  Such registrations have consistently been found to be confusingly similar.  See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to Complainant’s registered mark); see also General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the Complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondent’s domain names are confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  It is well established that Panels may presume that a Respondent has no rights or legitimate interests in a disputed domain name where the Respondent fails to submit a Response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).

 

Furthermore, the fact that Respondent registered domain names with knowledge of the existence of those marks is evidence that Respondent has no rights or legitimate interests in respect to the disputed domain names.  Such a conclusion is akin to the identical principle dealing with the former employee of a Complainant, since Respondent was acting as an independent contractor for Complainant when it registered the disputed domain names.  See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000)   (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark…the Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right…this is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2001) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark).

 

Respondent is not commonly known by the disputed domain names, is not using the domain names in connection with a bona fide offering of goods or services, nor is he making a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c).  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect to the disputed domain names.

 

Registration and Use in Bad Faith

Based on the totality of the circumstances, the fame of Complainant’s marks and the former business relationship between Complainant and Respondent, the Panel finds that Respondent’s failure to transfer the registrations of the disputed domain names over to the Complainant after termination of the business relationship with the Complainant supports a finding of bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where 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”)

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. 

 

Accordingly, it is Ordered that the <wardburton.com>, <wardburtondirect.com> and <wardburtonwildlifefoundation.com> domain names be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: December 7, 2001