National Association for Stock Car Auto
Racing Inc. v. Jason DeFillippo
Claim
Number: FA0306000165152
Complainant is National Association for Stock Car Auto
Racing Inc., Daytona Beach, FL (“Complainant”) represented by Julia C. Archer, of Enns & Archer LLP. Respondent is Jason DeFillippo, Naperville, IL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <winstoncupracing.com>, registered with Dotster.
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 June 26, 2003; the Forum received a hard copy of the
Complaint on June 30, 2003.
On
July 2, 2003, Dotster confirmed by e-mail to the Forum that the domain name <winstoncupracing.com>
is registered with Dotster and that Respondent is the current registrant of the
name. Dotster has verified that Respondent is bound by the Dotster 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 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 22, 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@winstoncupracing.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
August 1, 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.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <winstoncupracing.com>
domain name is confusingly similar to Complainant’s WINSTON CUP mark.
2. Respondent does not have any rights or
legitimate interests in the <winstoncupracing.com> domain name.
3. Respondent registered and used the <winstoncupracing.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
National Association for Stock Car Auto Racing, Inc., is the exclusive licensee
of the WINSTON CUP mark. This mark, used in connection with the WINSTON CUP
racing series since 1971, is owned by R.J. Reynolds Tobacco Company (U.S. Reg.
No. 1,099,001).
Television
ratings for Complainant’s WINSTON CUP Series are second only to the National
Football League for sporting events, and in 2002 seventeen of the twenty best
attended sporting events in the U.S. were WINSTON CUP Series races. In the
U.S., seventy-five million people identify themselves as fans of Complainant’s
racing series.
Respondent,
Jason DeFillippo, registered the <winstoncupracing.com> domain
name on January 13, 2002, and is not sublicensed or authorized by Complainant
to use the WINSTON CUP mark for any purpose. Respondent uses the disputed
domain name to redirect Internet users to adult-oriented websites, currently
choosing to direct users to the <milfhunter.com> domain name.
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 rights in the WINSTON CUP mark via the submission of proof that it
is licensed to use the mark, which is registered with the U.S. Patent and
Trademark Office. Complainant has also established rights in the WINSTON CUP
mark through widespread use of the mark in commerce.
Respondent’s
<winstoncupracing.com>
domain name is confusingly similar to Complainant’s WINSTON CUP mark. See Space Imaging LLC v.
Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where
Respondent’s domain name combines Complainant’s mark with a generic term that
has an obvious relationship to Complainant’s business); see also Christie’s,
Inc. v. Tiffany’s Jewelry Auction, Inc.,
D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly
similar to Complainant's mark since it merely adds the word "auction"
used in its generic sense).
Accordingly, the
Panel finds that the <winstoncupracing.com> domain name is confusingly similar to Complainant’s
WINSTON CUP mark under Policy ¶ 4(a)(i).
Respondent uses
the <winstoncupracing.com> domain
name to redirect Internet users to a pornographic website. Given the obvious
relationship between the disputed domain name and Complainant’s WINSTON CUP
mark, this use subjects Complainant’s mark to tarnishment and dilution, and
cannot be considered a “bona fide” offering of goods or services or a
“legitimate noncommercial” or “fair use” of the domain name. Thus, Policy ¶¶ 4(c)(i)
and (iii) do not apply to Respondent. See ABB Asea Brown Boveri Ltd.
v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact
that the “use of the disputed domain name in connection with pornographic
images and links tarnishes and dilutes [Complainant’s mark]” was evidence that
Respondent had no rights or legitimate interests in the disputed domain name); see
also McClatchy Mgmt. Serv., Inc. v. Carrington a/k/a Party Night, Inc., FA
155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features
pornographic material, had been “consistently held” to be neither a bona fide
offering of goods or services . . . nor a legitimate noncommercial or fair
use).
Given the fame of Complainant’s WINSTON CUP Series, the fact that
Respondent is not licensed to use that mark, and the fact that the only
available evidence indicates that Respondent is only known as Jason DeFillippo, the Panel finds that
Respondent is not “commonly known by” the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name
containing Complainant's distinct and famous NIKE trademark).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<winstoncupracing.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered and used the <winstoncupracing.com> domain name in bad faith. By using
Complainant’s mark at the time that it registered the disputed domain name in
order to attract Internet users to adult-oriented content, presumably for
profit, Respondent tarnishes the goodwill surrounding Complainant’s mark. This
deliberate tarnishment of Complainant’s mark for commercial gain, creating an
initial likelihood of confusion in the minds of Internet users as to the source
or sponsorship of the disputed domain name, is evidence that the domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of
Respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”); see also National Ass’n of Stock Car Auto
Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23,
2002) (stating that “it is now well known that pornographers rely on misleading
domain names to attract users by confusion, in order to generate revenue from
click-through advertising, mouse-trapping, and other pernicious online
marketing techniques”).
The Panel thus
finds that Respondent registered and used the <winstoncupracing.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <winstoncupracing.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 14, 2003
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