Dale Earnhardt, Inc. v. Marroc
Corporation
Claim Number: FA0306000161271
Complainant is
Dale Earnhardt, Inc., (“Complainant”) represented by Henry
B. Ward of Alston & Bird, LLP. Respondent is Marroc
Corporation, (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org>
and <daleearnhardtfoundation.net> registered with Go Daddy
Software, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 30, 2003; the Forum received a hard copy of the Complaint
on June 2, 2003.
On
June 2, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain names <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org>
and <daleearnhardtfoundation.net> are registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the names. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
June 3, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 23, 2003 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@daleearnhardtfoundation.com, postmaster@daleearnhardtfoundation.org
and postmaster@daleearnhardtfoundation.net by e-mail.
A
timely Response was received on June 17, 2003. Respondent stated, “In the
interest of fairness and respect for the legacy of Dale Earnhardt, Marroc
Corporation respectfully releases the above listed domain names so that they
may be transferred to Dale Earnhardt, Incorporated, effective immediately.”
On
June 26, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following
assertions:
1. Respondent’s <daleearnhardtfoundation.com>,
<daleearnhardtfoundation.org> and <daleearnhardtfoundation.net>
domain names are confusingly similar to Complainant’s DALE EARNHARDT mark.
2. Respondent does not have any rights or
legitimate interests in the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org>
and <daleearnhardtfoundation.net> domain names.
3. Respondent registered and used the <daleearnhardtfoundation.com>,
<daleearnhardtfoundation.org> and <daleearnhardtfoundation.net>
domain names in bad faith.
B. Respondent submitted an incomplete
Response that, nevertheless, indicated Respondent was willing to transfer the
disputed domain names to Complainant. In summary, Respondent does not dispute
Complainant’s claim to the domain names.
Complainant
holds two trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the DALE EARNHARDT mark (Reg. No. 1,644,237 registered on
May 14, 1991 and Reg. No. 2,035,107 registered on February 4, 1997) related to
entertainment services and numerous goods. Complainant operates websites at
<daleearnhardt.com>, <daleearnhardtinc.com> and <daleearnhardtincorporated.com>,
which offer goods and services related to the DALE EARNHARDT mark. One of
Complainant’s licensees is The Dale Earnhardt Foundation, a non-profit
corporation established for charitable purposes.
Respondent
registered the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org>
and <daleearnhardtfoundation.net> domain names on February 27,
2001. Respondent is using the domain names to redirect Internet traffic to
Respondent’s <zapblaster.homestead.com> website, which markets and
promotes Respondent’s ZAP-BLASTER mass e-mail services.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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 has
established that it has rights in the DALE EARNHARDT mark through registration
with the USPTO and continuous use in commerce since at least as early as January
1995.
Respondent’s <daleearnhardtfoundation.com>,
<daleearnhardtfoundation.org> and <daleearnhardtfoundation.net>
domain names are confusingly similar to Complainant’s mark because the domain
names incorporate Complainant’s entire mark and simply add the generic term
“foundation” to the end of the mark. The addition of a generic term to a famous
mark does not sufficiently differentiate the domain names from the mark with
regard to Policy ¶ 4(a)(i) because Complainant’s registered trademark remains
the principal aspect of the mark. See
Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either 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, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent
specifically expresses its intent to transfer the <daleearnhardtfoundation.com>,
<daleearnhardtfoundation.org> and <daleearnhardtfoundation.net>
domain names to Complainant in the Response. Respondent’s willingness to
transfer the disputed domain names to Complainant demonstrates that Respondent
lacks any rights to or legitimate interests in the domain names pursuant to
Policy ¶ 4(a)(ii). See Land O’
Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001)
(finding that Respondent’s willingness to transfer upon notification of the
Complaint is evidence of its lack of legitimate interests or rights); see
also Global Media Group, Ltd. v.
Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding that the
Respondent’s willingness at the onset of the Complaint to transfer the domain
names shows it lacks any legitimate interest or rights in the names).
The Panel finds
that Respondent’s offer to transfer the domain names in addition to
Complainant’s submissions of evidence establish Policy ¶ 4(a)(ii).
Respondent’s
offer to transfer the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org>
and <daleearnhardtfoundation.net> domain names to Complainant also
suggests that Respondent registered and used the domain names in bad faith
under Policy ¶ 4(a)(iii). See
Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001)
(Respondent’s registration and use of the domain name at issue coupled with its
expressed willingness to transfer the name amply satisfies the bad faith
requirements set forth in ICANN Policy); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum
Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s
allegations coupled with its willingness to transfer the names is evidence of
bad faith registration and use).
Moreover,
Respondent is using the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org>
and <daleearnhardtfoundation.net> domain names to divert Internet
traffic to Respondent’s website, which markets and promotes Respondent’s
ZAP-BLASTER mass e-mail services. Respondent’s registration and use of the
domain names to divert Internet traffic to Respondent’s commercial website
demonstrates Respondent’s registration and use of the domain names in bad faith
because intentionally attempting to attract Internet users to Respondent’s
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark evidences bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also
State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12,
2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <daleearnhardtfoundation.com>, <daleearnhardtfoundation.org>
and <daleearnhardtfoundation.net> domain names be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 8, 2003
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