Danica Racing, Inc. and Danica Patrick v. Web Master
Claim Number: FA0601000629203
Complainant is Danica Racing, Inc. and Danica Patrick (“Complainant”), represented by Rosanne T. Yang, of Baker & Hostetler LLP, 65 E. State Street, Suite 2100, Columbus, OH 43215. Respondent is Web Master (“Respondent”), General Delivery, Georgetown, Grand Cayman KT, Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <danicapatrick.com>, registered with Address Creation.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 20, 2006.
On January 18, 2006, Address Creation confirmed by e-mail to the National Arbitration Forum that the <danicapatrick.com> domain name is registered with Address Creation and that Respondent is the current registrant of the name. Address Creation has verified that Respondent is bound by the Address Creation 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 January 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2006 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@<danicapatrick.com> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <danicapatrick.com> domain name is identical to Complainant’s DANICA PATRICK mark.
2. Respondent does not have any rights or legitimate interests in the <danicapatrick.com> domain name.
3. Respondent registered and used the <danicapatrick.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Danica Patrick, is a 23-year-old automobile racing star. Complainant has competed in automobile races since 1992. In 2002, she signed a multi-year contract with Team Rahal and began competing professionally. Complainant won the 2002 Long Beach Grand Prix Toyota/Celebrity Race, and in 2003, she became the first female driver to achieve a podium finish in professional automobile racing. In 2004, Complainant became the first female driver to capture a pole position in the Toyota Atlantic Championship. In the 2005 Indy 500, Complainant placed fourth and became the first female driver to lead a lap of the race. Complainant has appeared on the cover of Sports Illustrated and in various other media outlets including <motorsport.com> and <indystar.com>.
Complainant established the Danica Racing, Inc. corporation to manage her sports and entertainment merchandising opportunities. Complainant operates the <danicaracing.com> domain name and sells T-shirts, caps, race cars, and other merchandise bearing her name. Complainant has been using the DANICA PATRICK mark in connection with her celebrity and her merchandise since at least 2002. Complainant filed applications for trademark registrations of the DANICA mark with the United States Patent and Trademark Office (“USPTO”) on June 17, 2005 and July 29, 2005.
Respondent registered the <danicapatrick.com>
domain name on June 20, 2004, the day after Complainant’s win at the Toyota
Atlantic Championship. Respondent is
using the disputed domain name to operate a pay-per-click website featuring
sponsored links relating to Complainant, race cars, and pornography. The website also
contains pop-up advertisements.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 is not required to own a trademark registration to establish rights in the DANICA PATRICK mark under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that the complainant has common law rights to her name); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”)
Complainant has established rights in the DANICA PATRICK mark through continuous and extensive use of the mark in connection with her automobile racing career and sports merchandise since 2002. Complainant has appeared on the cover of Sports Illustrated, won several major automobile races, and made history several times as a woman in the automobile racing profession. Therefore, Complainant’s DANICA PATRICK mark has established secondary meaning, as a means of marketing Complainant’s celebrity and merchandise featuring the mark, sufficient to satisfy Policy ¶ 4(a)(i). See Estate of Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”); see also Garnett v. Trap Block Techs., FA 128073 (Nat. Arb. Forum Nov. 21, 2002) (holding that the complainant had accrued common law rights in the KEVIN GARNETT mark).
Respondent’s <danicapatrick.com> domain name is
identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i), because it
incorporates Complainant’s entire name, eliminates the space in between
Complainant’s name, and merely adds the generic top-level domain name,
“.com.” Panels have held that the
addition of “.com” to a complainant’s mark and the elimination of a space
between words in a mark are both irrelevant for purposes of Policy ¶
4(a)(i). See Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the
generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ."); see also Blue Sky
Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000)
(holding that the domain name <robohelp.com> is identical to the
complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference"); see also Tech. Props., Inc.
v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain
name <radioshack.net> is identical to the complainant’s mark, RADIO
SHACK); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding that the respondent’s domain name
<charlesjourdan.com> is identical to the complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <danicapatrick.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <danicapatrick.com>
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
There is no evidence in the record suggesting that
Respondent is commonly known by the <danicapatrick.com> domain
name. Therefore, Respondent has not
established rights or legitimate interests in the <danicapatrick.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Moreover, Respondent is using the <danicapatrick.com> domain name, which is identical to Complainant’s DANICA PATRICK mark, to operate a pay-per-click web directory displaying links to information on Complainant, race car driving, and pornography. The website also contains pop-up advertisements. Such use of the disputed domain name for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the <toyrus.com> domain name, a simple misspelling of the complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name);
Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <danicapatrick.com> domain name, which is identical to Complainant’s DANICA PATRICK mark, to divert Internet users to a web directory containing links to third-party websites featuring information on Complainant, race car driving, and pornography. The Panel infers that Respondent receives click-through fees for diverting consumers to these websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill associated with the mark. The Panel finds that such use constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever 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.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <danicapatrick.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: March 3, 2006
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