Dale Earnhardt, Inc. v. Noramar
Enterprises
Claim Number: FA0207000117040
PARTIES
Complainant
is Dale Earnhardt, Inc.,
Mooresville, NC (“Complainant”) represented by Henry B. Ward, of Alston
& Bird, LLP. Respondent is Noramar Enterprises, Binghamton, NY
(“Respondent”) represented by Robert C.
Kilmer.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <daleearnhardtincorporated.com>,
registered with Verisign, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on July 26, 2002; the Forum received a hard copy of the Complaint on July 29,
2002.
On
July 30, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the domain
name <daleearnhardtincorporated.com>
is registered with Verisign, Inc. and that the Respondent is the current
registrant of the name. Verisign, Inc.
has verified that Respondent is bound by the Verisign, Inc. 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
July 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 19,
2002 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@daleearnhardtincorporated.com by e-mail.
A
timely Response was received and determined to be complete on September 6, 2002.
Complainant’s
Additional Submission was timely filed on September 11, 2002.
On September 17, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Dale
Earnhardt (now deceased) was a famous NASCAR Winston Cup stock car driver. Complainant, Dale Earnhardt, Inc.
(hereinafter “DEI”) is the exclusive agent of Earnhardt’s estate relating to
the use of the marks associated with Earnhardt, including the mark, DALE
EARNHARDT.
For
many years, Complainant, either directly or through sub-licensees, has
exclusively used the mark in conjunction with a wide variety of goods and
services.
Respondent,
Noramar Enterprises, acting in bad faith, has registered and is using the
domain name daleearnhardtincorporated.com for commercial purposes to
direct Internet users to its website.
Respondent’s
domain name that is the subject of this proceeding is confusingly similar to
Complainant’s DALE EARNHARDT mark, and Respondent has no preexisting rights or
legitimate interests in respect of said domain name.
Complainant,
DEI, is a corporation duly organized under the laws of the State of North
Carolina. At least as early as January
1995, Earnhardt and DEI entered into an exclusive license arrangement relating
to trademarks, service marks and other indicia relating to Earnhardt. This arrangement includes provisions that
allow DEI to sub-license third parties to offer goods and services under these
marks and provisions that require DEI to protect and enforce these marks.
Complainant,
either directly or through sub-licensees, has offered goods and services
bearing the DALE EARNHARDT mark since at least as early as 1975.
The
DALE EARNHARDT mark is the subject of two federal trademark and service mark
registrations, U.S. Trademark and Service Mark Registration No. 1,644,237 for
the DALE EARNHARDT mark and U.S. Trademark and Service Mark Registration No.
2,035,107 for the DALE EARNHARDT (stylized mark). U.S. Trademark and Service
Mark Registration No. 1,644,237 has been accorded incontestable status by the
U.S. Patent and Trademark Office. In
addition, the DALE EARNHARDT mark also is the subject of state trademark and/or
service mark registrations in Alabama, California, Florida, Georgia, Indiana,
Michigan, North Carolina, South Carolina, Tennessee, Texas and Virginia.
By
reason of the adoption and longstanding continuous use of the DALE EARNHARDT
mark, this designation has a distinctive quality and has acquired special and
particular significance and very valuable goodwill as identifying Dale
Earnhardt and Complainant’s goods and services.
Respondent
has identified itself to the registrar as “Noramar Enterprises” and has
provided a mailing address in Binghamton, New York. Respondent registered the domain name to market and promote
Noramar Enterprises.
By
letter dated September 10, 2001, Complainant’s counsel contacted Respondent and
requested transfer of the domain name.
Respondent’s counsel responded by letter dated November 19, 2001,
stating that Respondent’s counsel would contact Complainant’s counsel to
discuss the issue. Not receiving a
response, Complainant’s counsel contacted Respondent’s counsel by
telephone. Respondent’s counsel
indicated that Respondent would not voluntarily transfer the domain name to
DEI.
Upon
being contacted by Complainant’s counsel, Respondent modified its website to
indicate, among other things, that <daleearnhardtincorporated.com>
is a not-for-profit web site, that <daleearnhardtincorporated.com>
isn’t affiliated with the estate of Dale Earnhardt, Dale Earnhardt
Incorporated, GM, RCR or Nascar, and that “[t]his site is currently under
development as a future home to a Dale Earnhardt Fanclub.”
Respondent
is also owner of other domain names that bear upon this proceeding, including
<broomecountyfamilycourt.com>, <senatorthomaswlibous.com>,
<thomaswlibous.com>, the <worldtradecenter911.com>,
<the-worldtradecenter.com>, and <theworldtradecentermovie.com>. One of the domain names is used to
promote the “Law Offices of Mark Kachadourian.” Norimar Enterprises is owned by one “Mark Kach.” The domain name
at issue is strikingly similar to Complainant’s DALE EARNHARDT mark.
Respondent
is not affiliated with Dale Earnhardt or DEI.
Respondent did not register or begin using the subject domain name until
June 5, 2000—long after Complainant’s DALE EARNHARDT mark had acquired its
fame. Respondent has no preexisting
rights in “daleearnhardtincorporated” or “dale earnhardt,” as a
trademark, service mark or trade name.
Respondent
did not declare its interest in establishing a “Dale Earnhardt Fanclub” until
after being contacted by Complainant’s counsel, at which time Respondent
modified its website in an effort to seek shelter under Policy ¶ 4(c)(iii) for
non-commercial or fair use.
Respondent’s
bad faith in registering the domain name is evident from the circumstances
surrounding the formation and ownership of Respondent, as well as Respondent’s
registration and passive holding of other domain names having potential
commercial value. It appears that Mark
Kachadourian formed Respondent, Noramar Enterprises, using the alias “Mark
Kach’ in order to create a “front” or straw party to register potentially
commercially valuable domain names.
B.
Respondent
Complainant
has alleged that it is a licensee corporation authorized to market products
associated with Dale Earnhardt. Absent
from the Complaint is any documentation confirming this license agreement. Furthermore, there is no indication in the
Complaint that the estate of Dale Earnhardt has licensed Complainant to act on
its behalf.
Complainant
has only selectively enforced whatever rights it claims to have. There are at
least 29 domain names containing variations of the words “Dale” and “Earnhardt”
currently for sale at Verisign Inc.
This list was generated August 6, 2002.
Complainant enjoys no entitlement to every version of the Dale Earnhardt
name. It should be noted that Dale
Earnhardt, Inc. through its legal paperwork refers to itself as Dale Earnhardt
Inc, or DEI, not Dale Earnhardt Incorporated.
Complainant
is successfully marketing goods and services related to Dale Earnhardt via use
of the web site <daleearnhardtinc.com>.
Respondent
registered the domain name on June 5, 2000, prior to Dale Earnhardt’s untimely
death on February 18, 2001. It can
hardly be argued that the domain was purchased in anticipation of the increased
fame and notoriety resulting form the accidental crash. Noramar Entereprises’s ownership of the
domain name was not challenged during the life of Dale Earnhardt.
Mark
Kachadorian, President of Norimar Enterprises, LLC has been a lifelong fan of
Dale Earnhardt. During the last 20
years, Respondent has acquired thousands of dollars worth of Earnhardt
memorabilia.
Complainant
states in its papers that Respondent’s intent to develop the disputed domain
name as a fan club occurred after being contacted by Complainant’s
counsel. This is true. Subsequent to receiving what can only be
described as a threat from Complainant’s counsel, Respondent felt it necessary
to state this on the web site. Prior to
being contacted by Complainant’s counsel, Respondent communicated nothing to
the public on the web site other than the name of his limited liability
company. Respondent offered no goods or
services for sale related to either Noramar Enterprises or Dale Earnhardt. The
fact that he has never offered anything for sale to anyone on this site further
underscores the fact that his acquisition of the domain name was, and is, for
non-commercial purposes. As such, Respondent
has a legitimate interest in the domain name.
Respondent
denies that Mark Kachadourian has used any alias or created any “straw party.”
Respondent
did not register the domain name to prevent Complainant from reflecting the
mark in a corresponding domain name. In
fact, Complainant already owns the domain name <daleearnhardtinc.com>.
Respondent
is not a competitor of Complainant.
In
his letter dated September 10, 2001, Complainant’s counsel acknowledged that
Respondent, at least as of that date had not benefited commercially from the
web site when the letter stated “should Noramar Enterprises begin commercially
utilizing the Dale Earnhardt Inc. domain name such use may constitute a
violation…” It is ludicrous to assert that Respondent’s passive ownership of
domain names is motivated by a desire to ultimately transfer these domain names
or utilize them for commercial gain, since Respondent has never done so.
Mark
Kachadorian is a respected attorney in the Binghamton area.
C.
Additional Submissions
Complainant’s
Additional Response.
The
existence of third-party domain names that may infringe upon Complainant’s mark
does not legitimize Respondent’s bad faith registration and use of the domain
name.
Respondent
fails to provide any explanation regarding the nature of the business engaged
in by Noramar Enterprises or to otherwise establish that this entity is
something other than a depository for domain names having potential commercial
value.
Respondent’s
assertion that it intends to develop a “Dale Earnhardt Fan Club” at the domain
name is suspect. Respondent did not
register <daleearnhardtfanclub.com> or a variation thereof. Instead, Respondent registered a domain
name, which is identical to Complainant’s mark. Respondent’s alleged intentions concerning the “fan club” or
Respondent’s collection of Dale Earnhardt memorabilia are not supported in the
Declaration of Mark Kachadourian attached to the Response as an Exhibit.
Complainant
files an attachment including correspondence between Complainant and an
employee of Dun and Bradstreet explaining that names of principal businesses
are not shortened unless the names exceed 30 characters.
FINDINGS
1. Complainant is Dale Earnhardt, Inc., a
North Carolina corporation located in Mooresvillle, North Carolina.
2. Dale Earnhardt was a famous racecar
driver on the NASCAR Winston Cup Series circuit who, from 1979 until his
untimely death on February 18, 2001, won 70 times in 650 starts and accumulated
in excess of thirty-six million dollars in total winnings.
3. At least as early as January 1995, Dale
Earnhardt and Complainant entered into an exclusive license arrangement
relating to trademarks, service marks and other indicia relating to Mr.
Earnhardt, including, the mark DALE EARNHARDT.
This arrangement included provisions that allow Complainant to
sublicense others to offer goods and services under these marks, and that
require Complainant to protect and enforce these marks.
4. The mark, DALE EARNHARDT, was registered
on May 14, 1991, with the United States Patent and Trademark Office by Ralph
Dale Earnhardt (United States Citizen) and was thereafter renewed. The registration was for key chains,
pocketknives, clothing, paper goods, toys, and for entertainment services.
5. The Panel infers that whatever license
arrangement that existed between Dale Earnhardt and Complainant while Dale
Earnheadt was in life, was, after his death, continued by the party or parties
who succeeded to ownership of such rights.
6. Respondent is Noramar Enterprises of
Binghamton, New York. Respondent filed
its answer under the name, Noramar Enterprises, LLC that suggests that the
enterprise is a limited liability company.
The place of corporate registration and the nature of the business
conducted by Noramar Enterprises LLC are not provided.
7. Respondent registered the domain name, <daleearnhardtincorporated.com>,
on June 5, 2000.
8. The only evidence presented to illustrate
the use to which the domain name was put from June 5, 2000, until January 18,
2002, is a web page dated September 7, 2001, which shows an automobile
superimposed upon a small map grid and with the words “Noramar Enterprises,
LLC, 209 Court Street Binghamton New York 13901 USA 607-760-1859
http//www.daleearhardtincorporated.com.”
9. After notice of the dispute, Respondent
changed the content of the web page to state that the site owned by Noramar
Enterprises LLC, was not affiliated with Complainant, was a not-for-profit web
site and that “This site is currently under development as a future home to a
Dale Earnhardt Fanclub.”
10. Complainant operates a domain name at
<daleearnhardtinc.com>, that was registered on December 21, 1999.
11. Respondent’s domain name, <daleearnhardtincorporated.com>
is identical or confusingly similar to Complainant’s mark, DALE EARNHARDT.
12. Respondent has no rights or legitimate
interests in the domain name, <daleearnhardtincorporated.com>.
13. Respondent registered and has used the
domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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.
Identical and/or Confusingly Similar
The United States Patent and Trademark
registration of the mark, DALE EARNHARDT, gives the present holder of the mark
rights in the mark. Respondent points
out that Complainant supplies no contract or other written assignment or other
proof to show that Complainant, Dale Earnhardt, Inc. is the beneficiary of the
rights in the registered mark.
Complainant responds to this argument by contending that the statements
of Joseph Hedrick in his Affidavit attached as Exhibit A to the Complaint to
the effect that he is Executive Vice President-Licensing of Complainant and
that Complainant does have the right to exercise the rights granted in the
trademark registration is sufficient proof on this issue. A Complainant is required to prove its
rights in marks on which it relies by concrete evidence. Concrete evidence consists of “documents or
third party declarations.” See Do The Hustle, LLC. v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000). The Panel accepts
the Affidavit of Joseph Hedrick as concrete evidence of Complainant’s rights in
the mark, DALE EARNHARDT.
The next question it to determine whether
the domain name, <daleearnhardtincorporated.com> is identical or
confusingly similar to Complainant’s mark, DALE EARNHARDT.
Respondent’s domain name entirely takes
in Complainant’s mark. The only
difference is the addition of the word, “incorporated,” to the domain name and
the inclusion of the term “.com.”
Panels have considered domain names that include the word, “corp.” or
“corporation” in additional to the mark of the Complainant. One Panel stated: “Respondent does not by
adding the common descriptive or generic terms “corp.” or
“corporation”…following “PGE”, create new or different marks in which it has
rights or legitimate interests, nor does it alter the underlying mark held by
Complainant…The added terms ‘corp.’ and ‘corporation’ commonly refer to a
business entity. They are terms that
users of the Internet would expect to be used by Complainant in connections
with its mark…‘PGEcorporation.com…PGE-corporation.com and PGE-2000.com’ are
confusingly similar to Complainant’s mark” [PGE] “within the meaning of
paragraph 4(a)(i) of the Policy.” See
PG&E Corp. v. Samuel Anderson and PGE in the year 2000, D2000-1264
(WIPO Nov. 22, 2000); see also Brown Shoe Co., Inc. v. Guide Publications, D2001-0762
(WIPO Sept 4, 2001) comparing Brown Shoe Co. to <brown-shoes.com>. Another Panel decision held that “Similarly,
it is well established in U.S. trademark law that the addition or deletion of
the corporate designation ‘incorporated’ does not alter or eliminate the likelihood
of confusion between two confusingly similar trade names or marks.” See MasterCard Int’l Inc. v. John Henry
Enters., D2001-0632 (WIPO June 28, 2001).
The addition by Respondent of the word “incorporated” to Complainant’s
registered mark does nothing to alter the fact that the domain name and the
mark are confusingly similar.
Neither the addition of an ordinary
descriptive word nor the suffix “.com” detract from the overall impression of
the dominant part of the name in each case. See Sony Kabushiki v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000).
Complainant has satisfied the
requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant contends that it has never
authorized or licensed Respondent to use the mark, DALE EARNHARDT. Complainant contends that Respondent holds
no trademark or service mark corresponding to the name DALE EARNHARDT. Complainant contends that Complainant and
Respondent are not affiliated in any way.
Complainant contends that Respondent has never been known as DALE
EARNHARDT.
Complainant contends that Respondent has
never used the domain name for a bona fide offering of goods and services. Complainant asserts that Respondent has no
rights or legitimate interests in respect to the domain name at issue. When such a showing is made the following
rules apply. “When a Complainant asserts that a Respondent has no rights or
legitimate interests in respect of a domain name, it is incumbent upon the
Respondent to produce evidence of such rights and interests.” See PRL USA
Holdings, Inc. v. Search Hound, D2001-00010 (WIPO Feb. 13, 2002).
Respondent can demonstrate its rights and
legitimate interests in the domain name in any of the ways set out in Policy
paragraph 4(c).
Respondent makes no contention that it
has rights or legitimate interests under the methods set out in Policy ¶
4(c)(i) or ¶ 4(c)(ii).
Respondent’s sole position is that it has
rights and interests under Policy ¶ 4(c)(iii).
Respondent contends that the President of
Respondent, Mark Kachadorian, has been a lifelong fan of Dale Earnhardt. He does not own another site or domain name
that in any way resembles any other driver.
In fact, Respondent contends that it does not own a website pertaining
to any other celebrity or famous individual.
During the last 20 years, Respondent states that it has acquired
thousands of dollars worth of Earnhardt memorabilia. Respondent contends that it is its intent to develop the disputed
domain name as a fan club. It is not
clear from Respondent’s pleadings whether Respondent registered the domain name
with intent to use it as a fan club or whether Respondent decided to use the
domain name as a fan club at some later time.
Respondent admits that prior to Complainant’s letter demanding transfer
of the domain name, that “Respondent communicated nothing to the public on the
web site other than the name of his limited liability company.” Respondent says that it offered no goods or
services for sale related to either Respondent or Dale Earnhardt. The fact that Respondent has never offered
anything for sale to anyone on this site underscores the fact that Respondent’s
acquisition of the domain name was, and is, for non-commercial purposes,
Respondent contends.
Respondent admits that the inclusion on
the website of Respondent’s intent to develop the disputed domain name as a fan
club occurred after being contacted by Complainant’s counsel. Respondent contends that it is “making a
legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.” See Policy ¶ 4(c)(iii).
Both parties agree that only after notice
of the dispute did Respondent first mention on the web page that the site was
going to be developed into a fan club.
In facing a somewhat similar situation, where Respondent changed the
intended use to be made of a domain name containing the name of a famous
personality, the Panel stated: “Respondents who have engaged in use of a domain
name which does not amount to legitimate use must expect to bear a substantial
burden when they seek to demonstrate that their changed activity has acquired
this character.” See Julie Brown v. Julie Brown Club, D2000-1628 (WIPO
Feb. 13, 2001). To what use did
Respondent put the domain name prior to its announcement that it was being
developed into a fan club site?
Respondent supplies no evidence on this point except to contend that no
goods or services were offered. The
only evidence is a copy of a web page dated September 7, 2001. The web page contains only the name, address
and telephone number of Respondent. The
inference is made that this was the condition of the web site from the date of
registration until after notice of the dispute. Respondent does not enlighten the Panel as to what an Internet
user would encounter or be told if the user telephoned Respondent or
communicated with Respondent by mail. If no goods or services were offered to
Internet users at the site, the only logical inference to be drawn is that the
use of the domain name constituted a passive holding of the name. Such use is not a bona fide offering of
goods and services under the Policy.
Indeed, Respondent admits as much in the pleadings. Thus, Respondent must carry the substantial
burden explained in the Julie Brown decision.
Even if Respondent had initially
registered the domain name for use as a celebrity fan site, that in itself does
not amount to a use. See Celine Dion and Sony Music Ent’t (Canada) Inc. v.
Jeff Burgar operating or carrying on business as Celine Dion Club, D2000-1838
(WIPO Feb. 13, 2001).
Other Panels have addressed the question
of web sites dedicated to famous personalities in the nature of a fan club. See
Ricky Skaggs v. W. Ignacio Vincente, D2000-1134 (WIPO Dec. 18, 2000). In Helen Fielding v. Anthony Corbert
a/k/a Anthony Corbett, D2000-1000 (WIPO
Sept. 25, 2000) it was held that lack of use of the domain name for a
period of two years prior to the dispute, no active use of the domain name to
host a web-based fan club, no apparent use of the name nor any evidence of
plans for such a fan club coupled with the mere allegation of the use for a fan
club was insufficient as a basis for a finding of legitimate rights or
interests. It was stated in another fan
club case as follows: “Her status as a
fan might perhaps justify a finding of legitimate interests if she provided
evidence of offline fan activity of which the website was an extension or if
the website had been operational for a sufficient period. However, under the circumstances, Respondent
merely has an expectation of developing a legitimate interest in the domain
name at issue. This is insufficient to
defeat Complainant’s evidence that her use is unauthorized…”See Edward Van
Halen v. Deborah Morgan, D2000-1313 (WIPO Dec. 20, 2000).
When, after notice of the dispute,
Respondent announces for the first time that he is going to use the domain name
as a celebrity fan club web site, Respondent bears a substantial burden of
proof. “It is for him to show that the
new use of the site is substantial and genuine…” See Julie Brown v. Julie
Brown Club, supra. A mere
expectation of developing a fan club site is insufficient evidence to carry the
issue. See Edward Van Halen v. Deborah Morgan, supra.; see also Experience Hendrix, L.L.C. v. Denny
Hannerton and The Jimi Hendrix Fan Club, D2000-0364 (WIPO Aug. 15, 2000).
It should be noted that if Respondent
desires to operate a fan club for Dale Earnhardt then Respondent should be
charged with showing that no other reasonable alternatives were then available
to him but to use the name in order to fully exercise his rights of free speech
to present a fan site. Here, Respondent
made no such showing. See Universal City Studios, Inc. v. David Burns and
Adam 12 Dot Com, D2001-0784 (WIPO Oct. 1, 2001).
Based upon the evidence presented, the
proper inferences to be drawn from the evidence and the authority of prior
Panel decisions, it is the finding of this Panel that Respondent has
illustrated no rights or legitimate interests in the domain name, <daleearnhardtincorporated.com>.
Complainant has satisfied the
requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
It is the responsibility of Complainant
to prove that Respondent both registered and is using the domain name in bad
faith. Complainant may proceed to show
bad faith under any of the methods set out in Policy ¶ 4(b) or by any other
means which show, under the facts and circumstances of the case, use in bad
faith. See McNeal Consumer Brands, Inc. v. Washington Surgical Services, D2000-1657
(WIPO Mar. 23, 2001).
Complainant contends that Respondent
registered the domain name in bad faith based upon the activities of Mark
Kachadourian. Kachadourian is accused
of submitting incomplete and inaccurate registration information and
registering other domain names relating to the World Trade Center subsequent to
the events of September 11, 2001.
Complainant contends that this is evidence of concealment and intent to
profit. The Panel is not persuaded by
the evidence that Mark Kachadourian filed incomplete and inaccurate
registration information. Kachadourian’s activities do not rise to the level
recognized by Panels to constitute an effort at concealment of Respondent’s
identity. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003
(WIPO Feb. 18, 2000).
However, it is clear that Respondent
registered the famous name of a celebrity with full knowledge that Dale
Earnhardt had trademark rights in his name.
“Registration of a well known trademark by a party with no connection to
the owner of the trademark and no authorization and no legitimate purpose to
utilize the mark reveals bad faith.” See ROHO, Inc. v. Mark Duane, D2000-1168
(WIPO Dec. 14, 2001); see also Victoria’ Secret v. Hardin, FA 96694
(Nat. Arb. Forum Mar. 31, 2001). The
Panel has no difficulty in finding that Respondent registered the domain name
in bad faith.
Complainant must next prove that
Respondent used or is using the domain name in bad faith. Complainant contends that Respondent has
been and is using the domain name in bad faith since Respondent used the web
site to promote Noramar Enterprises.
Then, after notice of the dispute, Respondent changed the web site to
one under construction as a fan site.
This change in purpose, argues Complainant, is evidence of bad faith
use. Complainant cites to the decision
in Salomon Smith Barney Inc. v. Saloman Internet Servs., D2000-0668
(WIPO Sept. 4, 2000) that held that a respondent cannot claim noncommercial use
of a domain name, within the meaning of Policy ¶ 4(c) when such use commences
after notice of the dispute, since to hold otherwise would thwart the intent of
the Rules. The Panel in that case
seemed to consider this issue, which relates to legitimate rights and
interests, along with other circumstances in its finding of bad faith.
Complainant further contends that the
passive holding of the domain name at issue along with the other domain names
listed earlier in this decision is evidence of bad faith.
Here, as opposed to other decisions where
the domain name was not used in any way, the domain name resolved itself to a
web page upon which was listed only the name of Noramar Enterprises, its
address and telephone number. This
condition apparently existed over a long period of time. According to Respondent, nothing was offered
at the web site in the nature of goods and services. The Panel can see nothing to distinguish this from the passive
holdings criticized in other domain name dispute decisions.
“Various panels have ordered transfer of
a domain name after a extended period of non-use was coupled with a complainant
having valid trademark rights commenced prior to the date on which the
offending domain name was registered coupled with the registrant having actual
or imputed knowledge of those rights.” See Jones Apparel Group, Inc. v.
Robin Sousa, D2001-1308 (WIPO Dec. 21, 2001) and cases cited therein.
The issue was carefully considered in Kabushiki
Kaisha Toshiba a/b/a Toshiba Corp. v. Distrib. Purchasing & Logistics Corp.,
D2000-0464 (WIPO July 27, 2000). In
that case it was said, “…in considering whether the passive holding of a domain
name, following a bad faith registration of it, satisfied the requirements of
paragraph 4(a)(iii), the Administrative Panel must give close attention to all
the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those
circumstances show that the Respondent’s passive holding amount to acting in
bad faith.” The Panel then considered
whether the Complainant owned and used the mark in question. It considered the fact that respondent had
provided no evidence of any actual or contemplated good faith use of the domain
name. It considered whether respondent
had ever been commonly known by the domain name. It considered whether the respondent had registered other domain
names with which respondent could show no association and finally that
respondent was never licensed to use the domain name containing complainant’s
mark. The Panel found that when each of
these elements required an answer adverse to respondent, that the respondent’s
passive holding of the domain name amounted to an instance of bad faith under
Policy ¶ 4(a)(iii).
This Panel finds that based upon all of
the evidence available in this case, that Respondent was and is using the
domain name in bad faith.
Further, Respondent, by holding the
domain name in issue corresponding to Complainant’s mark passively prevents
Complainant from reflecting its mark in a corresponding domain name. See
McNeil Consumer Brands, Inc. v. Washington Surgical Servs., D2000-1657
(WIPO Mar. 23, 2001); see also Julia Brown v. Julie Brown Club, D2000-1628
(WIPO Feb. 13, 2001).
Complainant has satisfied the
requirements of Policy ¶ 4(a)(iii).
It is the decision of the Panel that the
domain name,<daleearnhardtincorporated.com>, now registered to
Respondent, Noramar Enterprises, be TRANSFERRED to Complainant, Dale
Earnhardt, Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: Oct. 1, 2002
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